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
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.
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