28 Dec 2016 in Newsletter
Recent USPTO Roundtables Explore Patent Subject Matter Eligibility
Patent law in the US has been shaken in recent years by Supreme Court decisions holding that several kinds of inventions are not eligible for patents, relying on the judicially created concept that laws of nature, natural phenomena, and abstract ideas cannot receive patents. The result of these decisions is that it very difficult or impossible to patent computer software, business methods, methods for medical diagnosis, and molecules found in nature. Although the Supreme Court apparently left the door open to the possibility that some such inventions could be patented, it provided minimal guidance as to what might still be patentable. For example, inventions that can be characterized as comprising an abstract idea can apparently be patented if they have “something more,” but there is no clear guidance as to what the “something more” means.
Patent examiners have struggled with the difficult question of which patent applications for these types of inventions remain eligible for a patent. Recently the United States Patent and Trademark Office (USPTO) held two day-long roundtables on Patent Subject Matter Eligibility, one in Alexandria, Virginia (at the USPTO) on November 15 and another in Stanford University in Palo Alto, California on December 5. The goal was to promote conversation regarding how the current jurisprudence is evolving on patent eligibility under 35 USC § 101 (which governs patent eligibility) and how the examination of such patent applications can be improved. Speakers from law firms, industry, and the USPTO were given an opportunity to make brief statements on the law of patent eligibility and to comment on how the USPTO could improve its examination of these types of patent applications.
A few speakers who were mainly concerned about nuisance lawsuits asserting patents from non-practicing entities (“patent trolls”) tended to view the limitations on patent eligibility favorably. In contrast, those with a stake in patent portfolios were usually critical of the current rules, and particularly with the examination of those inventions in the USPTO. Many speakers described frustrations they have experienced with § 101 rejections. The USPTO has rewritten its guidelines for examiners several times to take into account new case law from the Federal Circuit, especially for software-related inventions. Speakers agreed that the most helpful part of the guidelines were hypothetical examples based on recent case law showing how the guidelines should be applied. Nevertheless, there was a consensus, shared by officials of the USPTO, that many Examiners were not sufficiently trained regarding how to apply the USPTO guidance. A recurring problem is the need to help Examiners understand the level of abstraction appropriate when comparing to the guideline examples; virtually every invention can be taken to a level of abstraction that will “convert” the invention into an abstract idea, but this is not consistent with the guidance on § 101. In some cases the guidelines are inconsistently enforced by the Examiners and § 101 rejections are often not clearly articulated in a manner that allows for response. Although many speakers noted the lack of clear definitions, it seems very difficult to come up with or agree on good definitions. Some speakers questioned the one size fits all approach, and suggested that there could be different standards for different technology areas (e.g., software and biotech).
There seemed to be a consensus that recent Federal Circuit case law was helpful in clarifying patent-eligible criteria, especially for software-related inventions. That is, there must be a technical solution offered (although what is considered “technical” may be subjective), which seems somewhat similar to the requirements in Europe.
Some speakers hoped that Congress would pass legislation to clarify section 101. One speaker, Robert Armitage (former chief counsel of Eli Lilly and Company), proposed a specific amendment to § 101 of the patent law (explained in detail in a 45-page document), but he is concerned that Congressional action is not politically feasible today. More likely is that the courts will develop case law to gradually clarify the boundaries of subject matter eligibility (with a little help from periodic USPTO guidance).
The public can submit written comments about patent eligibility to the USPTO. These are due by January 18, 2017.
 Bilski v. Kappos, 130 S. Ct. 3218 (2010), Mayo Collaborative v. Prometheus Labs. , 132 S. Ct. 1289 (2012), Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Intern. , 134 S. Ct. 2347 (2014).