Iancu: USPTO may revise s101 guidance on abstract ideas
The US Patent and Trademark Office (USPTO) may revise its guidance on what constitutes an unpatentable abstract idea, in an effort to increase clarity in the patent process.
Andrei Iancu, director of the USPTO, discussed the possible change during the Intellectual Property Owners’ Association’s annual conference in Chicago yesterday, September 24.
Iancu’s remarks follow the USPTO’s recent announcement that it is updating its Patent Trial and Appeal Board procedures, in an attempt to increase transparency, as well as revising its guidance on America Invents Act trials.
Yesterday, Iancu explained that the office has issued patent examiners with new guidance on section 101.
“As many of you know, we recently issued to our examiners two new guidance memos on section 101: the first dealing with the ‘conventionality’ step in the Mayo/Alice framework, and the second on ‘methods of treatment’ claims. Our data shows that these two memos have already improved the 101 analysis during examination.
But, according to Iancu, “significantly more work needs to be done” in relation to the understanding of “abstract ideas” in the patent realm.
The director added that he agreed with the sentiments expressed by the judiciary that the “abstract idea” test is indeterminate and can lead to arbitrary results.
Under section 101, claims must represent something more than an abstract idea to be patentable.
The USPTO has thousands of examiners who struggle with section 101 issues on a daily basis and they, along with applicants, patent owners and the public, need additional guidance, Iancu said.
Iancu questioned how something can be novel, non-obvious, and yet lack an inventive concept.
“How can something concrete be abstract?” he asked.
To remedy this issue, the USPTO is contemplating revised guidance to assist examiners. The guidance would categorise patentability exceptions and instruct examiners on how to apply them, increasing predictability in patent analysis.
Another area addressed by Iancu in yesterday’s speech is the USPTO’s legacy IT systems.
Last month, the USPTO’s patent systems underwent emergency IT maintenance following an unplanned outage. Patent filers were unhappy that the week-long outage resulted in increased paper filing fees and extra administrative work in attempting to claim a refund for the increased fees.
In relation to this, Iancu said that a “fundamental modernisation effort” must occur to bring vital IT systems up to date.
With regard to trademarks, Iancu claimed that the USPTO has been meeting or exceeding its goals over the past 12 years, despite experiencing a significant growth in the number of applications.
He added that a large part of the increase in applications can be attributed to China, from which the number has risen by almost 1,100% in the past six years.
The increased volume of foreign applications has presented problems relating to unauthorised individuals practising law in the US, according to Iancu.
As a result, he explained that the USPTO is considering implementing a rule that would require foreign trademark applicants to be represented by a US-licensed attorney to file documents at the agency.
Iancu said that any revised guidance discussed in his speech would “take some time to finalise”, and he welcomes comments on these and any other USPTO proposals.
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