USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law

by Jo Dale Carothers, Ph.D.
The IP Law Blog

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which involve the limits on patent eligibility under 35 U.S.C. § 101.   For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” The Supreme Court further recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.

To determine whether claims are patent-eligible the Supreme Court set forth a two-part test in Mayo as further explained in Alice. This test consists of the following steps:

Step 1: The court determines whether the claims are directed to an abstract idea.

Step 2: If the claims are directed to an abstract idea, then the court determines whether the claims include elements showing an inventive concept that transforms the idea into a patent-eligible invention. Step 2 is satisfied when the claim limitations “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”

Since these Supreme Court decisions, the Court of Appeals for the Federal Circuit has applied this two-step test and issued a number of opinions as to whether a particular subject matter is patent-eligible.  At times, it has been difficult to understand the reason one invention was found patent-eligible while another similar invention was not.  When the Federal Circuit has been asked to rehear various cases en banc, the multiple, separate opinions have made it even more clear that the court is rather divided as to the boundaries of what is and what is not patent-eligible.  Patent attorneys and inventors are often left to guess whether a particular invention is patent-eligible.

Recently Senators Tillis, Hirono, Cotton, and Coons asked the United States Patent and Trademark Office (“USPTO”) to seek information from the public as to “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.”  After evaluating the public’s responses, the Senators requested that the USPTO prepare a summary of its findings by March 5, 2022.

As a result, the USPTO has requested comments from the public on 13 topics, which can be found at this link and are paraphrased and summarized below.

  1. Explain how the current state of patent eligibility jurisprudence affects the conduct of business in your technology areas.
  2. Explain what impacts you have experienced as a result of the current state of patent eligibility jurisprudence in the United States, including concrete examples in the following areas: patent prosecution strategy and portfolio management, patent enforcement and litigation, patent counseling and opinions, research and development, employment, procurement, marketing, ability to obtain financing from investors or financial institutions, investment strategy, licensing of patents and patent applications, product development, sales, innovation, and competition.
  3. Explain how the current state of patent eligibility jurisprudence in the United States impacts particular technological fields, involving investment and innovation in quantum computing, artificial intelligence, precision medicine, diagnostic methods, pharmaceutical treatments, and other computer-related inventions such as software, business methods, computer security, database and data structures, computer networking, and graphical user interfaces.
  4. Explain how your experiences with the application of subject matter eligibility requirements in other jurisdictions, such as China, Japan, Korea, and Europe, differ from your experiences in the United States.
  5. Identify instances where you have been denied patent protection for an invention in the United States solely on the basis of patent subject matter ineligibility, but obtained protection for the same invention in a foreign jurisdiction, or vice versa.
  6. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to modify or shift investment, research and development activities, or jobs from the United States to other jurisdictions, or vice versa.
  7. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to change business strategies for protecting your intellectual property, such as shifting from patents to trade secrets, or vice versa.
  8. Explain whether you have changed your behavior with regard to filing, purchasing, licensing, selling, or maintaining patent applications and patents in the United States as a result of the current state of patent eligibility jurisprudence in the United States.
  9. Explain how the status of patent eligibility jurisprudence in the United States has affected any litigation for patent infringement in the United States in which you have been involved.
  10. Identify how the current state of patent eligibility jurisprudence in the United States impacts the global strength of U.S. intellectual property.
  11. Identify how the current state of patent eligibility jurisprudence in the United States impacts the U.S. economy.
  12. Identify how the current state of the subject matter eligibility jurisprudence in the United States impacts the global strength of the U.S. economy in the areas of quantum computing, artificial intelligence, precision medicine, diagnostic methods, pharmaceutical treatments, and other computer-related inventions.
  13. Identify how the current state of patent eligibility jurisprudence in the United States affects the public, such as the availability, effectiveness, or cost of personalized medicine, diagnostics, pharmaceutical treatments, software, or computer-implemented invention

Comments must be received by the USPTO by September 7, 2021.