USPTO Issues Study of Opinion on Patent Eligibility Jurisprudence

The lack of consistency and clarity in subject matter eligibility following the Supreme Court’s rulings in Mayo^[1] and Alice Corp.^[2] prompted four senators^[3] to ask the United States Patent and Trademark Office (“USPTO”) to publish a request for opinions on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and provide a detailed summary of its findings by March 5, 2022. As a result, the USPTO published a report in June 2022, which was the result of comments from the public regarding the impacts of U.S. jurisprudence on patent subject matter eligibility. ^[4]

The Patent Eligibility Jurisprudence Study requested concrete examples, supporting facts, and detailed descriptions on how the current jurisprudence has impacted investment and innovation, particularly in critical technologies, such as quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.^[5] Thirteen questions were included in the request to garner the most accurate and useful responses.^[6] The questions were split into two sections: (I) observations and experiences, and (II) impact of subject matter eligibility on the general marketplace. The study received over 140 responses from legal associations, industry organization, advocacy groups, nonprofit entities, businesses, law firms, practitioners, academics, and inventors.

Although the responses varied in support and frustration with the current state of the law, the responders generally agreed that the standard for determining patent eligible material should be clear, predictable, and consistent.^[7] Computer-based entities argued that the new standard challenges overly broad patents, allowing enterprises to prioritize innovation and technological advancements rather than allocate resources to unnecessary and expensive litigation.^[8] Certain life sciences organizations and patient advocacy groups are in favor of the current state of the law, expressing that the public benefits from access to information and advancements for research purposes.^[9] Those that represent emerging fields, such as artificial intelligence (AI) and quantum computing, also point to upward trends in investments and innovation as evidence that the changing state of the law has had a positive impact.^[10]

Those not in favor of the current state of the law argued that the significant inconsistencies, uncertainty, and unpredictability with regard to issuing and enforcing patent rights, stems from an unreasonable expansion of the exceptions to patent eligibility.^[11] The inconsistencies that life sciences entities face during prosecution hinders small companies, as well as startups, from obtaining reliable patent rights, which in turn, discourages possible investors.^[12] As a result, competition in certain fields cannot thrive and larger, well-established companies are able to dominate.^[13] Some businesses, especially in the fields of diagnostics and precisions medicine, indicated that they no longer seek patent protection and instead rely on other forms of IP protection, such as trade secrets.

Director of the USPTO, Katherine K. Vidal, stated in a letter addressed to the four senators, that “clear intellectual property laws that incentivize innovation … [are] critical for job creation, opportunity, economic prosperity and U.S. competitiveness.”^[14] The USPTO will continue to monitor feedback from stakeholders and discuss the important topic of patent eligible subject matter as it evolves to find an optimal path that benefits and incentivizes all parties involved in patent law.

¹ Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66 (2012).

² Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).

³ The four senators: Thom Tillis (R-NC), Chris Coons (D-DE), Mazie Hirono (D-HI) and Tom Cotton (R-AR)

⁴ United States Patent and Trademark Office, “Press Release: Following a series of Supreme Court decisions, new USPTO report on patent subject matter eligibility finds diversity of views regarding the current state of jurisprudence in the U.S.”, (June 2022). Retrieved from https://content.govdelivery.com/accounts/USPTO/bulletins/31df580.

⁵ United States Patent and Trademark Office, “Federal Register Notice: Patent Eligibility Jurisprudence Study”, Regulations.gov (July 2021). Retrieved from https://www.regulations.gov/document/PTO-P-2021-0032-0002?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=

⁶ Id.

⁷ United States Patent and Trademark Office, “Press Release: Following a series of Supreme Court decisions, new USPTO report on patent subject matter eligibility finds diversity of views regarding the current state of jurisprudence in the U.S.”, (June 2022). Retrieved from https://content.govdelivery.com/accounts/USPTO/bulletins/31df580.

⁸ United States Patent and Trademark Office, “Federal Register Notice: Patent Eligibility Jurisprudence Study”, Regulations.gov (July 2021). Retrieved from https://www.regulations.gov/document/PTO-P-2021-0032-0002?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=

⁹ United States Patent and Trademark Office, “Patent eligible subject matter: Public views on the current jurisprudence in the United States”, Report to Congress (June 2022).

¹⁰ Id. at p. 22.

¹¹ Id. at p. 41.

¹² Id.

¹³ Id.

¹⁴ Id. at p.  2.