Analysis: USPTO’s Section 101 Guidance Puts Onus on Congress

The aftermath of the Supreme Court’s decisions in Mayo v Prometheus Laboratories and Alice v CLS Bank left unanswered questions as to what is and is not patentable under Section 101. In April 2020, the U.S. Patent and Trademark Office (USPTO) published a report assessing the impact of the USPTO’s January 2019 patent-eligibility guidance (2019 PEG) and a subsequent update the following October. The January guidance advised USPTO examiners on how to interpret the law of what is and is not patentable, citing 46 examples of patent applications and whether they would be approved or rejected under Section 101. World IP Review contacted Finnegan partner Linda Thayer for her thoughts on the report.

Acknowledging that many patent lawyers found certainty as a result of 2019 PEG, Linda said, “We sunk into a morass of uncertainty post-Alice, and it’s only in the past few years that we’ve been able to claw ourselves out.” She noted that the 46 examples provided in the report have been a helpful resource for attorneys when drafting patent applications.

However, while the USPTO’s guidance is beneficial for filing a patent application, courts are not required to follow the guidance when issuing decisions. That said, only the Supreme Court of the United States (SCOTUS) and Congress can provide absolute certainty on patent eligibility and since the SCOTUS has shown no intention of revisiting the issue, Congress is left with the final say. Linda said, “The next step would be for Congress to codify some of the guidance that the USPTO is operating under.”

Linda also addressed the original intent of Section 101. She said, “Courts tried to use Section 101 as a brake on troll litigation when that isn’t really it’s correct purpose. We should return to the intent of Section 101, which is for it to be a coarse filter” on what is and isn’t patentable.

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