USPTO outlines public recommendations for section 101 future
The US Patent and Trademark Office (USPTO) has outlined recommendations submitted by the public on what measures should be taken to address the recent changes in patent eligibility law.
Earlier this week, the office published a report looking at the history of the law, public views on patent eligibility jurisprudence and recommendations for the future.
Section 101 has been at the heart of a number of recent US Supreme Court decisions, including Alice v CLS Bank, which set out a two-part test for patent eligibility, and Mayo Collaborative v Prometheus.
“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,” said Joseph Matal, interim director of the office, in a blog post.
During roundtables held by the USPTO, and written comments, commentators agreed that the court’s decisions have had a “significant impact” on the scope of patent-eligible subject matter.
“However, commentators disagreed as to whether the impact was positive or negative,” said the report.
Some members of the public viewed the Supreme Court’s rulings as “simply part of the normal judicial process”, while others questioned the legal foundation of them.
“Another criticism of the Supreme Court’s recent decisions is that the court has expanded the judicially-created exceptions to eligibility to the point that they are now overbroad,” added the report.
Public recommendations to address the court’s heightened eligibility standard were directed to all three branches: the judicial, legislative, and executive.
The report claimed that those who were generally supportive of the rulings, especially representatives from the software community, saw no need for legislative intervention and instead recommended allowing the judiciary to continue to develop the eligibility case law.
But others suggested that administrative measures should be taken to improve the application of the two-part test, with a number of commentators requesting more consistent treatment.
“Representatives from law firms, legal associations, industry groups, and life sciences companies agreed that the legislature is the appropriate body to recalibrate the proper scope of patent eligibility,” said the USPTO.
In March this year, the IP law section of the American Bar Association outlined its recommended revisions to section 101, while the American Intellectual Property Law Association offered up its proposals in May.
“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,” said Matal.
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