The United States Patent and Trademark Office (USPTO) has
released a report titled, “PATENT ELIGIBLE SUBJECT MATTER: REPORT ON VIEWS AND RECOMMENDATIONS FROM THEPUBLIC” (Report) concerning the comments of participants at USPTO sponsored
roundtables concerning the patent eligible subject matter requirement,
particularly post-Alice/Mayo. The USPTO
summary of the Report states:
Much of the
feedback we received highlighted the complexities of determining the
appropriate boundaries of patent subject matter eligibility. Commenters
confirmed that the recent Supreme Court cases have significantly changed the
standards for determining patent subject matter eligibility. Several commenters
expressed concern that these decisions have created inconsistency, uncertainty,
and unpredictability in the issuance and enforcement of patents, particularly
in the life sciences, software, and e-commerce industries.
A diverse group of
representatives from academia, industry, law firms, and legal associations
proposed legislative changes aimed at reversing the recent trend in the law and
restoring, in their view, a more appropriate dividing line between eligible and
ineligible subject matter. In contrast, a sizable portion of representatives
from the software industry argued that the Court’s two-step test provides an
appropriate standard for patent subject matter eligibility. This group
cautioned against legislative redress and instead recommended that the common
law should be allowed to evolve.
The following is
a list of the views against the new rules: “1) Decisions are Legally Flawed; 2)
Exceptions are Overbroad; 3) Two Step Test is Unclear and Causes Unpredictability;
4) Preemption Conflates 101 with other Patentability Requirements; 5)
Jurisprudence Stifles Innovation and Hurts Business; and 6) Consistency of U.S.
Law with International Norms.” Here is a list of the views in favor of the new
rules: “1) Common Law Process at Work; 2) Weeds Out Overbroad Patents; 3)
Requires Claiming a Specific Way and Not a Result; 4) Litigation Tool Against
Patent Assertion Entities; and 5) May Give U.S. Entities an Advantage.”
On the point in
favor of the new rules based on May Give U.S. Entities an Advantage, the Report
states:
Even if the
Supreme Court’s new eligibility standard differs from standards abroad, a few
commentators projected that the difference could actually operate to the
benefit of the United States. For example, one commentator argued that because
foreign entities have an increasing stake in the U.S. patent system,
“[g]eopolitical considerations . . . weigh heavily in favor of” the Supreme
Court’s Mayo and Alice decisions.246 In fact, she cautioned that if the U.S. were
to adopt an overly expansive patentability standard, then not only would
“American inventors, American companies, American investors, and the American
public” benefit, but an “equal or greater benefit [would] inure to foreign
inventors, foreign companies, and, in some cases foreign governments.”247
Another participant asserted that “if a company is innovating because it can
get patents in Germany or Europe but it may not be able to get as much
protection in the U.S., that innovation is still happening.” 248 And, she
added, “if our consumers can benefit from the additional competition that a
lack of patent [protection] provides and pay lower prices here” and “the
innovator can still get their investments recouped by getting monopoly profits
elsewhere” that may not be a bad deal for our consumers.249
Members of the
life sciences community were relatively united in their critique of the new
patent eligible subject matter rules. The
computer/related technologies community was apparently less united on whether
the patent eligible subject matter rules were a good thing or not.
There are also
several legislative proposals for change, including: Replace the current test
with a technological arts or useful arts test; Expressly define exceptions to
eligibility; Distinguish eligibility from other patentability requirements; and
Establish a research exemption to infringement.
The text
concerning the research exemption states, in relevant part:
Several
commentators proposed a legislative amendment to recognize a research exemption
from patent infringement for experimentation conducted to better understand or
improve a claimed invention.427 According to these commentators, such an
amendment would address the Supreme Court’s preemption concerns, i.e., concerns
that patents on foundational technological tools may stifle scientific progress
by tying up the basic building blocks of human ingenuity.428 One commentator
suggested that the exemption could be tailored such that “patents on research
tools would be unaffected, but research on a patented invention itself would
not be subject to infringement allegations.”429
The USPTO should
be applauded for its hard work in trying to make the patent eligible subject
matter rules and their application accessible, and obtaining the public’s
viewpoint.
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