Q&A: Tracy Hitt on US patent bills
Last week, August 3, US Senator Thom Tillis introduced the Patent Eligibility Restoration Act of 2022, a bill that would codify exceptions to patent eligibility and help to address the uncertainties that exist around what inventions are considered abstract under patent law.
The bill is expected to clarify definitions of patent eligibility and allow for inventions with technological components to be patent-eligible while detailing enforceable exclusions.
The proposed legislation is particularly pertinent following the US Supreme Court’s refusal to take up the patent eligibility issue in American Axle & Manufacturing v Neapco Holdings, and could bring welcome reform to patent protection in the US.
This legislation promises to evaluate and improve the patent examination process and the overall quality of patents issued by the US Patent and Trademark Office (USPTO).
And the same week, another bill, the Patent Examination and Quality Improvement Act of 2022, was also announced.
Tracy Hitt, principal at Fish & Richardson, gave his views to WIPR on both bills.
How far does the patent eligibility bill go in terms of patent protection?
I believe that this bill is a huge step in the right direction of improving patent protection. The primary issue negatively affecting perceived patent quality is the uncertainty related to patent eligibility under Section 101.
Issued patents are invalidated on the basis of prior art that wasn’t identified during the examination process and 112 issues, but in many cases, those validity issues are more predictable, and more easily addressed, than the issues surrounding patent eligibility under Section 101.
The proposed bill appears to clarify and simplify the patent eligibility standards in a way that allows for the technical contributions of computer and software-based innovations to again be universally recognised. This will improve the strength of granted US patents and bring our patent eligibility standards more in line with those China adopted in the past few years.
Which sectors will benefit most?
I don’t have enough experience with the life sciences or chemical technologies to opine on the impact any recommendations may have in those technology areas, but in the computer science and electrical engineering areas in which I practice, I believe that the revised Section 101 would provide much more certainty when it comes to patent eligibility.
This additional certainty would provide computer and software-based startup companies, particularly in the artificial intelligence space, more confidence that their investments in patents will provide real value and protection because their granted patents would be less susceptible to Section 101 post-grant challenges, which are commonplace today.
That would likely raise the value of these companies and provide more opportunities for some of these startups.
How will the bill affect the work of patent attorneys and patent owners?
If the bill is adopted, it would enable patent attorneys to provide clients with more useful recommendations in all areas of patent law. For instance, patent attorneys would be able to provide more certain assessments of the likelihood of patentability for new technologies and the ability to withstand a post-grant challenge to an asserted patent.
Patent owners would be in a stronger position because there would be more certainty as to the validity of their patents and their ability to prevent third-party infringement.
How will the bill relate to the Patent Examination and Quality Improvement Act of 2022?
The proposed revisions to Section 101 would streamline the examination process at the USPTO and allow applicants and examiners to focus more time and effort on the prior art and 112 aspects of the patent examination process. This would allow examiners more time to search and apply prior art since they would be spending less time on patent eligibility issues.
The eligibility exceptions in the revised Section 101, as proposed, appear very straightforward, and easily applied/explained, which would be a welcomed change from the current situation in which it is difficult to reconcile the patent eligibility rejections from application to application.
Have uncertainties surrounding patent eligibility held back the exam process?
The uncertainty surrounding patent eligibility under Section 101 slows the patent examination process, for example, because everyone involved in the process, applicants, attorneys, and examiners alike, are continuously trying to hit a moving target from one office action to the next, one court decision to the next, and even across art units.
There currently isn’t a predictable way to approach subject matter eligibility, leading to a messy iterative approach that requires more back and forth with the patent office, delays decisions on patentability, and costs applicants more money.
As a point of contrast, China has been moving in the opposite direction to the US as it relates to the patent eligibility of computer and software innovations—and the outcomes in China are currently much more predictable than those in the US, which results in more streamlined prosecution focused on prior art rejections and clarity issues.
Tracy Hitt is a principal in the Atlanta office of Fish & Richardson. His practice focuses on patent portfolio counselling and management, preparation and prosecution of patent applications, patent infringement analysis, patent validity analysis, and post-grant patent challenges.
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