IP Law Daily, PATENT NEWS: USPTO is seeking public comments on patent eligibility jurisprudence, (Jul 12, 2021)

By Cheryl Beise, J.D.

Inquiry is in response to recent letter to Acting Director Hirshfeld from bipartisan group of senators.

The USPTO is seeking public comments on the current state of patent eligibility jurisprudence in the United States, including its impact on investment and innovation. According to the request for information, the inquiry is in response to a March 5 letter to Commissioner of Patents and USPTO Acting Director Andrew Hirshfeld from a bipartisan group of U.S Senators who are concerned that the lack of consistency and clarity in patent eligibility standards applied by courts "has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries" (86 Fed. Reg. 36257, July 9, 2021).

To assist with crafting a legislative solution to patent eligibility issues, Senators Thom Tillis (R-N.C.), Mazie Hirono (D-Haw.), Tom Cotton (R-Iowa), and Christopher Coons (D-Conn.) asked the acting director to publish a request for information and report the findings to Congress by March 5, 2022. The Senators are seeking information regarding the impact current jurisprudence has had on "investment and innovation, particularly in critical technologies such as quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments."

Patent eligibility jurisprudence under 35 U.S.C. §101 has been informed by four Supreme Court decisions—Bilski v. Kappos, 561 U.S. 593 (2010); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013); and Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). In July 2017, the USPTO published a report summarizing then current patent eligibility law, public views on the impact of the recent Supreme Court patent eligibility jurisprudence, and public recommendations for a path forward. In January and October, 2019, the USPTO issued revised patent subject matter eligibility guidance for examiners, which has been incorporated into the Manual of Patent Examining Procedure, sections 2103 to 2106.07(c). These documents are available on the subject matter eligibility page of the USPTO website. Since 2017, the Federal Circuit has issued numerous decisions applying the Supreme Court's legal framework in a variety of contexts, and many petitions for writ of certiorari have been filed and denied.

In this request for information, the USPTO is seeking answers from inventors, patent owners, investors, licensees, litigants, and other stakeholders to a series of specific questions regarding their particular experiences regarding patent prosecution, enforcement, litigation, research and development, licensing, product development, competition, etc. Several questions ask about experiences in obtaining patent protection in the United States versus foreign patent offices. The Office is especially concerned with what impact patent eligibility in the United States has on the general marketplace, as well as on particular technological fields, including quantum computing, artificial intelligence, precision medicine, diagnostic methods, pharmaceutical treatments, and computer-related inventions.

More information, including how to submit comments is available in the request for information. Comments are due no later than September 7, 2021.

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