On July 9, 2021, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on behalf of Senators Tillis, Hirono, Cotton, and Coons seeking public input for a patent eligibility study.1 The study focuses on the current state of patent eligibility case law in the United States, and how it affects investment and innovation in fields like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments. Current law has made it difficult for patent innovations that can be characterized as abstract ideas or natural phenomena, which has made protection in fields like computer applications and medical diagnostics harder to obtain and defend.
The senators sent a letter to Commissioner of Patents Drew Hirshfeld, who is performing the functions and duties of the Director of the USPTO, asking that the USPTO publish a request for information. The USPTO, however, cannot do much with the submitted comments and information. Indeed, the U.S. Court of Appeals for the Federal Circuit has told the USPTO that it cannot bind anyone but itself.2 Instead, the senators appear to want the submitted comments as initial fact-finding to promote legislative solutions.
Subject matter eligibility is a particular issue for start-up companies and their surrounding ecosystems (like venture capitalists) and those in the software and diagnostic space. By submitting a comment, businesses affected by patent eligibility decisions may have a genuine opportunity to improve the very laws that affect them.
The notice poses 13 questions for public comment to prompt discussion on real-world impacts of patent eligibility case law. The questions are divided into two sections: 1) Observations and Experiences and 2) Impact on the General Marketplace. The focus is on the effect current law has on decisions that actual innovators and related businesses make regarding seeking and enforcing patents. To this end, the notice seeks specific examples of difficulties encountered in prosecuting patents, seeking investments, marketing innovations, and the like. The notice also seeks comparison with other leading innovation economies, such as Japan, China, Korea, and Europe. Because the senators represent a full spectrum of political views, this effort suggests the beginning of a serious bipartisan effort at reform.
All comments must be received by September 7, 2021, through the Federal eRulemaking Portal at www.regulations.gov.
Matthew Garnica and Richard Torczon contributed to the preparation of this alert.
[1] 86 Fed, Reg. 36257.
[2] cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1376 n.1 (Fed. Cir. 2021); In re Rudy, 956 F.3d 1379, 1382-83 (Fed. Cir. 2020).
