Washington DC
26 July 2017
Reporter: Barney Dixon

USPTO presents patent subject matter eligibility viewpoints


The US Patent and Trademark Office (USPTO) has published a new report detailing public viewpoints on the appropriate boundaries of patent-eligible subject matter.

The US Supreme Court has shifted the definitions of patent-eligible subject matter in recent years, with myriad decisions, including Mayo v Prometheus and Alice v CLS Bank, interpreting exceptions for abstract ideas, laws of nature and natural phenomena.

A new two-part test was fashioned in Alice, but it has done little to clarify patent-eligible subject matter. In software, experts argued that the test is stifling innovation and that the quality of an invention, rather than its mode of implementation, should be the litmus test for protection.

Much of the feedback in the USPTO’s report—taken from two roundtables and a public consultation—confirmed the complexities of determining the boundaries of patent-eligible subject matter and many commentators were still split on its implementation.

Some respondents took the view that the Supreme Court’s decisions were merely a normal judicial process, with one respondent highlighting this as a representation of the separation of the executive and judicial branches.

The report said: “In his view, the court intentionally tried ‘to be parsimonious in its decisions’ and ‘tried very hard not to make blanket and broad statements’.”

Other respondents said that when applied properly, the two-part test leads to “sound outcomes” in patent eligibility.

The Electronic Frontier Foundation told the USPTO that, since Alice, software companies have outperformed the rest of the market and that research and development spending in software and the internet has increased by almost 11 percent in the 12 months since the two-part test was confirmed.

The USPTO also took responses that were critical of the Alice test and the Supreme Court’s decisions. One respondent alleged that the Mayo and Alice cases were “deeply flawed in terms of statutory legislative history and jurisprudence”.

Others said that there is “no constitutional or policy justification” for the test, and that the Supreme Court decisions were “arguably unconstitutional”.

Most respondents recommended some form of legislative change, with voices from the life sciences industry in particular championing this cause.

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