USPTO Delivers on Senators’ Request for Patent Eligibility Jurisprudence Study

By Eileen McDermott
July 8, 2021

“A Federal Register Notice scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in the effort to reform U.S. patent eligibility law.”

https://depositphotos.com/28667711/stock-photo-green-us-101-south-highway.htmlIn March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic.

Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

How Has Eligibility Law Affected You?

The FRN includes questions such as:

  • How does the current state of patent eligibility jurisprudence impact the conduct of your business; particular technological fields, investment and innovation in areas such as quantum computing, artificial intelligence, and precision medicine; and your experience with patent prosecution/ litigation/ R&D, etc.?
  • How does your experience with U.S. patent eligibility jurisprudence compare to your experience with other jurisdictions?
  • How has it affected your business strategy for protecting IP?
  • How does the current state of U.S. patent eligibility jurisprudence affect the global strength of U.S. IP and the U.S. economy?

The FRN recaps the case law around patent eligibility jurisprudence since Bilski v. Kappos in 2010, ending with the still-pending petition to the U.S. Supreme Court in American Axle. It also asks commenters who are patent owners or inventors to provide “the number of U.S. and foreign patent applications you have filed; the number of U.S. and foreign patents you hold; the number of patents you have licensed or sold; and the number of patent cases you have been involved in since the Supreme Court’s decision in Bilski in 2010.”

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Lack of Consensus

It is unclear what the outcome of such a study might be, but one of the authors of the March letter, Senator Thom Tillis (R-NC), led the charge in 2019 trying to reach agreement on reforms to Section 101/ patent eligibility law, ultimately declaring it “dead on arrival” without stakeholder consensus. “I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach,” Tillis told the Intellectual Property Owners Association in January 2020. “If we’re going to get anything done on this issue, everyone will have to compromise.”

The biggest roadblock to consensus was on changes to 35 U.S.C. 112(f). Some stakeholders who wanted a legislative fix for 35 U.S.C. 101 were concerned that the proposed amendment to 112 would simply move rejections and invalidity arguments from 101 to 112. As a result, Tillis’ focus moved from patent reform to copyright reform last year, which culminated in a draft plan to reform the Digital Millennium Copyright Act (DMCA) in December 2020.

The March 2021 letter, and now this FRN, are the latest government activity on the topic. In the letter, the senators were particularly interested in “learning how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.”

Sequenced Patent Examination Pilot

Tillis and Senator Tom Cotton (R-AR) also sent another letter to Hirshfeld later in March 2021 asking him to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.” This proposed pilot program would require a select group of examiners and applicants who elected to participate in the program “to engage in a full examination of the grounds of patentability and then, once that process is complete, a full examination of the grounds of eligibility.”

The senators’ concern was that “by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101.”

They added:

By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

Have Your Say

Comments are due 60 days from the date of publication of the FRN. According to the draft request for information:

Comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov. To submit comments via the portal, enter docket number PTO-P-2021-0032 on the homepage and click “Search.” The site will provide a search results page listing all documents associated with this docket. Find a reference to this request for information and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments.

Image Source: Deposit Photos
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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments. Join the discussion.

  1. Primary Examiner July 8, 2021 4:09 pm

    The Sequenced Patent Examination Pilot sounds interesting. However, it is not completely clear to me what a “complete” process (prior art) represents: “and then, once that process is complete, a full examination of the grounds of eligibility.”

  2. Anon July 8, 2021 5:59 pm

    Can you say, “Bahr Step Zero Memorandum?”

  3. ipguy July 8, 2021 8:41 pm

    @1

    It’s as clear mud, that’s for sure. It seems to be saying that Examiners should address 112, 102, and 103 and THEN, keeping in mind all the analysis that went into reviewing those issues, Examiners can take a look at 101. Perhaps the thought is that if Examiners can reject a claim under 102 or 103, they won’t waste their time doing a 101 rejection since it is in the Examiner’s interest to move on to the next Office Action as quickly as they can, instead of spending more time going through the 101 analysis on claims they’ve already rejected based on prior art.

  4. Pro Say July 8, 2021 8:47 pm

    “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.”

    Are you kidding me?! Really!?

    Did the Senators have their hands over their ears and their eyes closed during 2019’s THREE DAYS of hearings? With some 40 witnesses? Plus an ocean of written submissions?

    American innovation doesn’t need — and can ill afford — any more studies, opinions, and suggestions.

    The appropriate legislative action is this:

    Simply abrogate Mayo / Alice and their resultant court cases in order to restore patent eligibility to ALL areas of innovation; doing so with no further addition(s) or changes to the patentability requirements.

    There. That’s it. That’s all.

    Problem solved. Job done.

    No more time wasting. No more b.s.

    Pass the bill that our country desperately needs.

    Before we fall any further behind China.

    Shred all that $$$ that Big Tech puts into your reelection war chests year after year and which pays their immoral lobbyists and do what you know is right for our Country — pass the d.a.m.n. bill.

  5. concerned July 9, 2021 9:21 am

    I suggest that 101 be amended to legally deny all software patents. Accordingly we can then stop the pretense and move on with our lives.

    It is disheartening for the PTAB to write that the inventor has met the law as written by Congress but the application has not met the standard of judges.

    Cut to the chase. Judges write the law, not Congress.

  6. Anon July 9, 2021 12:26 pm

    concerned,

    Were you missing an “/s” (or perhaps an “/S”)?

    You are aware of course of the US Sovereign’s explicit Constitutional delegation of writing patent law to but one specific branch of the government, right?

  7. concerned July 9, 2021 5:05 pm

    Anon: Yes and yes it was sarcasm.

    It is just a shame what is going on with patent jurisprudence. I think that my attorney is going to argue at the Federal Circuit that I received no due process among other arguments.

  8. Anon July 10, 2021 9:32 am

    Spin is everywhere.

    Look at the title of this article, and tell me with a straight face that this author is not violating a sense of ethics (whether or not a code of ethics is in place).

    https://www.eenewseurope.com/news/do-patents-kill-innovation-us-patent-office-asking

  9. Anonymous July 11, 2021 9:50 pm

    It is both infuriating and insulting that the Senate is kicking this down the road for another year. Public comments are due September, 2021. Then the Director must “evaluate the responses, and provide a detailed summary of its findings by March 5, 2022.” And then what? Another 2 years of waiting again for nothing? Congress didn’t hear of enough horror stories in the public hearings in June, 2019? Seriously?

    Senators Tillis and Coons, you must recall telling us TWO YEARS AGO, “We know change is needed” and “Another point that came through loudly and clearly was the necessity for Congress to intervene.” https://www.tillis.senate.gov/2019/6/tillis-and-coons-what-we-learned-at-patent-reform-hearings

    Come on Congress, time to act. You’re hurting real people and damaging our national security by doing nothing.

  10. Model 101 July 12, 2021 2:09 pm

    Pro Say –

    Don’t hold back sista!

    The emperors who have no clothes will get mud on their little privates.

    Inventors, like me, want their patents back from the 101 sink hole.

    The 101 baby is unconstitutional and should me reformed retroactively. I think our best bet is a reversal from the Supremes.

    What say you?

  11. Pro Say July 12, 2021 3:09 pm

    “I think our best bet is a reversal from the Supremes.”

    Like you, Model 101, I, too have had my inventions usconstutionally trashed.

    Our best bet?

    I’m hedging mine . . . by betting on (and praying) both SCOTUS and Congress doing the good, right, and indeed moral thing by restoring patent eligibility to all areas of innovation.

    For unless such restoration happens in the next year or two, American innovation; especially in the most important medical, tech, and med-tech fields (they are converging); may be permanently crippled.

    Americans are not going to enjoy living is such a bleak world.

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