Following a series of Supreme Court decisions, new USPTO report on patent subject matter eligibility finds diversity of views regarding the current state of jurisprudence in the U.S.

WASHINGTON — In response to a request from a bipartisan group of lawmakers, the United States Patent and Trademark Office (USPTO) today released a report to Congress detailing the results of the Office’s call for comments from the public regarding the impacts of U.S. jurisprudence on patent subject matter eligibility.

In their March 2021 request to the USPTO, Senators Thom Tillis (R-NC), Chris Coons (D-DE), Mazie Hirono (D-HI), and Tom Cotton (R-AR) asked the USPTO to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and provide us with a detailed summary of your findings.”

Their request specifically noted the lack of consistency and clarity in the area of patent subject matter eligibility since the Supreme Court’s 2012 and 2014 rulings in the Mayo and Alice Corp. cases, in which the court enunciated a two-step framework for determining subject matter that is patent eligible.

"Innovation cannot thrive in uncertainty,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “We are committed to making every effort to ensure that the U.S. patent system is as clear and consistent as possible. We are analyzing our own patent eligibility guidance put in place in 2019, implementing the pilot program for deferred examination of patent eligibility, and considering guidance on functional claiming.  We look forward to our continued work with Congress and stakeholders on these key issues.”

A Federal Register Notice published by the USPTO in July 2021 garnered 141 different responses from a diverse set of stakeholders including legal associations, industry organizations, advocacy groups, nonprofit entities, businesses, law firms, practitioners, academics, and inventors. The full texts of the comments are available on the regulations.gov website.

Key points raised by the commenters include the following:

• There was general agreement that the law on patent eligibility should be clear, predictable, and consistently.
• Those in support of the current state of the law on eligibility argued many points, including that it allows businesses to avoid abusive and costly litigation involving overly broad patents; promotes greater innovation and knowledge sharing; and enhances access to scientific information and innovative medicines. Representatives from emerging fields, such as AI and quantum computing, noted that their investments have trended upward since the Supreme Court decisions.
• Those critical of the current state of the law contended that the law makes patents less available and enforcement of those rights less predictable, inhibiting investment in new technologies and companies, particularly by startups and small- and medium-sized enterprises. Many commenters also pointed out that, in their view, the current state of the law undermines innovation by decreasing the availability of private risk capital, thus concentrating markets in the hands of a few large, well-resourced incumbents.
• Some businesses, especially in the fields of diagnostics and precision medicine, indicated that they are no longer seeking patent protection and are instead turning to other forms of IP protection, such as trade secrets, at the cost of decreased disclosure of new technological information.

The USPTO will continue to reach out to a broader array of stakeholders, including industry groups in critical and emerging technologies, small- to medium-sized enterprises, those who fund startups and organizations focused on economic growth. All stakeholders are encouraged to submit additional feedback and suggestions to 101@uspto.gov.

The USPTO is also hosting several listening sessions with Director Kathi Vidal to discuss key issues impacting stakeholders and their businesses. All stakeholders are welcome and encouraged to attend in-person or via livestream. For more information, please see the Stakeholder listening session page.

See the full report online.

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