Comments on USPTO Patent Eligibility Study Reveal Stark Contrast in Viewpoints of Some U.S. Patent Stakeholders

The comment period for the U.S. Patent and Trademark Office (USPTO)’s patent eligibility jurisprudence closed on October 15, 2021. The USPTO began the study in July of 2021, intending to use public comments to assess the impact of Section 101 patent eligibility law on investment in U.S. innovation. IP Watchdog reached out to Finnegan partner Paul Browning to comment on the USPTO’s study and its potential impact.

Paul stated:

“The comment period is significant because it appears the Senators who requested the USPTO study are interested in hearing how businesses and other stakeholders are impacted by the current state of patent eligibility jurisprudence in the United States. The Senators may be assessing whether legislative action is desirable or necessary to address perceived issues with subject matter eligibility law and also may be gauging public and industry support for any such legislation they may propose. It will be interesting to see whether the comments criticize the current status of patent eligibility law as overly uncertain or restrictive. Stakeholders that rely on patent protection for their businesses would be expected to offer that type of criticism. But other responders may instead comment favorably on recent decisions invalidating patent claims based on a lack of subject matter eligibility. It is even possible that some commentators will advocate for a change in the law further restricting the scope of patent eligible subject matter. Many other countries and jurisdictions are far more restrictive in their subject matter eligibility requirements than the United States, and do not permit patents directed to, for example, business methods or methods of medical treatment. Some commentators may point this out and argue that the United States should restrict its laws in this manner.

The USPTO has made substantial and commendable efforts in trying to account for the continuing evolution in the law of subject matter eligibility. However, absent further helpful guidance from the Supreme Court or Congress, it is hard to be optimistic about these endeavors. Recent decisions by the Federal Circuit in Athena Diagnostics, Inc. and American Axle indicate that the Federal Circuit itself is sharply divided about how to resolve questions of subject matter eligibility. Given this uncertainty, it is hard to imagine how the USPTO alone can bring clarity to this area of the law and its application to the work that they do.”

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