“The Office indicated that this is part of a “multi-pronged approach to imparting more clarity and certainty into patent eligibility.”
Following U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s blog post in July explaining that she will be revisiting the Office’s 2019 subject matter eligibility guidance, the USPTO today announce a September 1 Federal Register Notice requesting public comments on the existing guidance. The Notice explained that “given the overwhelming interest in the guidance, the USPTO will now accept feedback via the Federal eRulemaking Portal until October 15, 2022.”
In the July 25 blog post, Vidal explained that the eligibility guidance implemented by former USPTO Director Andrei Iancu “has gone a long way toward providing consistent decision-making across our over 9,600 patent professionals, and has also produced a remarkable drop in the corps-wide eligibility rejection rate from about 25% in 2018 to about 8% today.”
A subsequent report on patent examination outcomes titled “Adjusting to Alice” explained that the 2019 revisions to the eligibility guidance “resulted in a 25% decrease in the likelihood of Alice-affected technologies receiving a first office action with a rejection for patent ineligible subject matter” and “uncertainty about determinations of patent subject matter eligibility for the relevant technologies decreased by a remarkable 44% as compared to the previous year.”
However, Vidal noted that a recent patent eligibility report published by the USPTO in June 2022 in response to a March 2021 request from Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) found that, while the 2019 guidance has been helpful, it has not resulted in the necessary predictability or consistency because a) it is not binding on the courts and b) USPTO examiners do not always apply it consistently. The latter issue has made prosecution very art unit dependent, said some commenters, while others claimed that “there is… evidence that the revised guidance is leading to the allowance of patent claims that are ineligible under Alice.”
Vidal thus asked the public in her July blog to send comments by September 15, 2022, to [email protected]. But today’s notice extends that deadline to October 15, and comments should now be submitted through the Federal eRulemaking Portal. Comments previously received at [email protected] will be given equal consideration but should be resubmitted via the Portal as well.
In today’s announcement, the Office indicated that this is part of a “multi-pronged approach to imparting more clarity and certainty into patent eligibility” that includes “working with Congress on potential changes to the law and looking for opportunities in the courts,” as well as updating the guidance.
Earlier this month, Senator Tillis introduced his promised Patent Eligibility Restoration Act of 2022, 2, which if enacted would, at a minimum, abrogate the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).
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