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Tuesday Jul 25, 2017

New Report Presents Viewpoints on Patent Subject Matter Eligibility

Blog by Joe Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO

This week, the USPTO published a new report synthesizing public comments on an important question for innovators in a wide variety of industries: What are the appropriate boundaries of patent eligible subject matter?

Between 2010 and 2014, four opinions issued by the U.S. Supreme Court—Bilski, Mayo, Myriad, and Alice—significantly affected patent eligibility law. Following these rulings, the USPTO provided updated guidance to patent examiners, initiated a nationwide conversation on patent subject matter eligibility through a series of events and roundtables, and has now published a report presenting what we have learned from the public on this important issue. Some have raised concerns that the heightened bar for patent subject matter eligibility that resulted from these decisions has undermined the ability of intellectual property (IP) intensive industries to secure rights and investments in their innovations. Others have applauded the rulings for providing a useful tool in flushing out patents on technologies that they feel should not be patentable.

U.S. patent

U.S. Patent

In 2016, the USPTO convened two roundtables and issued a request for public comments on the topic of patent subject matter eligibility. The first roundtable was held November 14, 2016, at USPTO headquarters in Alexandria, Virginia, and the second roundtable was held December 5, 2016, in Stanford, California. All four USPTO regional offices also participated in the events via webcast.

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 useful feedback that we gathered from the public over the past months will help ensure that we understand the views and concerns of the innovation community. As the world’s most innovative economy, the United States relies on IP to support economic growth and business development. A healthy patent system that fuels research and development of innovative technologies is a critical component of our nation’s robust system of IP rights. Given the link between a healthy patent system and our nation’s economy, the contours of patent subject matter eligibility are of great concern to the USPTO and the IP community.


Patent law is not only important, but essential to the evolving world of innnovation and proper market pursuit, especially as technology and their supporting works, continue to lead the charge into the future. As the dialogue around the parameters of justifiable patent applications continue, now more than ever, comprehensive dialogue must consider not only corporate position and fairness but just as rightfully so, new start ups and small/mid-level businesses and their right to pursue proper market pursuit with legal right and protection, in both monopolistic and oligopolistic interests.

Posted by Seilas Phillips on August 30, 2017 at 07:53 PM EDT #

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