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USPTO Director’s Blog Post Advocating Certainty in § 101 Determinations Paradoxically Increases Uncertainty | McDonnell Boehnen Hulbert & Berghoff LLP

Kathi Vidal, Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (right) posted a blog post on the USPTO Director’s Blog on Monday tackling the sensitive subject of the subject’s eligibility under 35 USC § 101 as interpreted over the past decade by the United States Supreme Court and implemented by the Bureau in light of those decisions.

As with most of the Director’s public statements, the tone of the message is generally upbeat, praising the Bureau’s efforts to respond to sometimes confusing, even contradictory instructions from the courts (particularly the Federal Circuit, which is somewhat understandable given the sometimes Delphic language on the matter by the High Court). Director Vidal refers to the Office’s 2022 Report to Congress on “Patentable Subject Matter: Public Views of Current U.S. Jurisprudence” and the message therein: “Overall, stakeholders have generally agreed that patent eligibility law, as in other areas of patent law – must be clear, predictable and applied consistently.” The director also recites the canon of innovation saying that “[t]its clarity and consistency will enable innovators to attract the investments and collaborations that bring more innovation to impact, creating more jobs and solving global problems.”

Although the feelings expressed by the director are admirable (and it would be difficult for her to be credible if she did not subscribe to them), the devil, in this case, is not only in the details, but in the process of determination of admissibility within the constraints of recent case law. To that end, the post mentions the Deferred Subject Eligibility Response (DSMER) pilot program (attributing the impetus for this initiative to Senators Thom Tillis (R-NC) and Tom Cotton (R-AK)) and describing the program as ” aimed at assessing whether the efficiency of examination and the quality of patents can be improved by delaying the full assessment of subject matter admissibility until other criteria for patentability are assessed instead of being met all patentability requirements at the same time” and reminding stakeholders that it will expire on July 30, 2022 although patent applications involved in the program will persist during their processing. Regarding its adoption, the statistics of the Director indicate that approximately one third of the 600 invitations sent by the Office were accepted, with the Director making no conclusion or statement as to whether this frequency was expected or consistent with the Office being able to draw conclusions as to its effectiveness.

The Director then took note of the suite of guidance, including the revised 2019 Patent Subject Matter Eligibility Guidance, the October 2019 Updated Patent Eligibility Guidance and the berkheimer Memorandum, which can be found in section 2106 of the latest version of the Patent Examination Procedures Manual. In association with these assertions, the director provides the encouraging statistic that “the corps-wide refusal rate of eligibility [has dropped] from around 25% in 2018 to around 8% today”, although it is certainly likely that at least part of this improvement is due to the candidates adapting to PTO and circuit standards federal that have evolved since the Supreme Court began its crusade of eligibility in the matter. in 2012 with its decision in Mayo Collaborative Services v. Prometheus Laboratories. The Director also refers to the Office’s October 2020 report on ‘Public Views on Artificial Intelligence and Intellectual Property Policy’ and its ‘Adapting to Alice’ report on the results of the patent review published in April 2020. These reports support the Chief Economist’s findings that the 2019 report revisions to the Office’s eligibility guidelines produced a 25% decrease in the frequency of technologies affected by Alice to receive a first action from the Office asserting a rejection under Section 101, and that “uncertainty in determinations of patent subject matter eligibility for the technologies involved has diminished by a remarkable 44% compared to the previous year.”

This is all very well as far as it goes, with the Director grateful to previous Directors, Trustees and the Examiner Corps for reducing somewhat the uncertainties caused by the justice-created changes in the law on the eligibility of materials. But the following sentences negate much of the good feelings produced by these achievements, with the director stating “[d]Despite this progress in achieving a more consistent review under section 101, there is still work to be done. Accordingly, we are reviewing our guidelines on subject eligibility. To that end, the director is asking the public to provide feedback on topic eligibility by September 15, 2022 to 101@uspto.gov and by participating in stakeholder listening sessions. certainly the case where the subject eligibility law remains pending, re-questioning stakeholders seems like a fool’s errand (besides being completely redundant). It is well established that there are two generic species of claimants: those who believe the status quo is optimal for them and their business goals and are therefore fully satisfied, and those who have been adversely affected by the outright exclusion of certain technologies innovative (medical diagnostics being a prime example) and are therefore totally dissatisfied (and have been forced to use trade secrecy and other means to protect their technologies, albeit imperfectly). It’s hard to see how another round of these efforts will be more successful. han those that the inauguration of this latest iteration indicates have been inadequate.

Some glimmers of hope can be found in the blog post’s closing statements, regarding efforts to consult with counterpart offices in foreign countries, regarding how those countries have largely avoided the confusion that has arisen in states United States (although it is likely that the simple reason for the existing clarity abroad on the eligibility of the matter is entirely due to the absence of a Supreme Court in these countries which is involved in the elaboration patent policy). To the extent foreign counterparts may raise questions about current U.S. law or its interpretation of subject eligibility that conflicts with international obligations under the TRIPS Agreement, such discussions may be helpful. . The blog also notes the cooperation between the PTO and the DOJ Solicitor General regarding efforts to identify the “right vehicles” to achieve the goal of “creating more certain and predictable rights that foster innovation.”

The simple fact is that the Supreme Court has shown no recognition of the need to review its jurisprudence on the admissibility of the matter (even when encouraged to do so by the Solicitor General, as in the American axle cases), the Federal Circuit was unwilling to provide a useful counterbalance to the court’s dicta regarding eligibility, and the PTO does not have the power under statute to bind judicial decision-making. Congress is the answer, as frightening as that reality may be in the current political climate, and despite some effort, it has been unable to enact legislation that would make things better. For now, it is only by accepting Judge Breyer’s challenge to the skillful draftsman (seeMayo Collaborative Services v. Prometheus Laboratories — What should we do? (or can these claims be salvaged?)” to craft sufficient claims to provide the maximum possible protection with the least risk of invalidation, can the situation be improved if not entirely corrected.