Solving the Section 101 Conundrum: Examining Stakeholder Workarounds vs. Legislative Reforms

“The U.S. patent landscape is in flux, with stakeholders navigating intricate challenges while awaiting clearer legislative direction. For the United States to maintain its innovative edge, a balanced approach…is crucial.”

Section 101Judicial rulings have muddied the waters of patent eligibility, with judges themselves expressing uncertainty. In the case, Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, U.S. Court of Appeals for the Federal Circuit judge Kimberly Moore openly shared the challenge of applying Section 101 consistently, explaining that “the majority’s blended 101/112 analysis expands § 101, converts factual issues into legal ones and is certain to cause confusion for future cases.”

This haze has driven innovators to tread cautiously, often sidelining potential patents for fear of 101 rejections—stifling the American dream of groundbreaking innovation. Stakeholders craft tactics to dodge these pitfalls while lawmakers propose reforms.

This article dives into these dynamics, assessing their pros and cons.

Stakeholder Workarounds to Sidestep 101 Rejections

In the ever-evolving patent landscape, savvy professionals arm themselves with strategies including the following to skirt patent ineligibility:

Targeted Drafting: Guide your application to favorable Art Units. With varying approval rates across the U.S. Patent and Trademark Office’s (USPTO’s) classification systems, craft your claim with anticipated 101 challenges in mind, detailing all technological nuances.

Refine Your Argument: Seasoned patent attorneys recommend emphasizing your claim’s tangible application, particularly if the “abstract idea” objection arises. Highlight elements beyond human cognitive capability.

Know Your Examiner: Dive into online databases. Understanding your examiner’s track record offers insights into crafting a winning application. Familiarizing yourself with their track record can shed light on preferences, biases, and rationale. Such insights, from favoring specific argument styles to noting certain technological nuances, can be instrumental in shaping an application that overcomes potential 101 rejections.

Lean on Precedents: With Section 101’s ambiguity, past rulings guide today’s decisions. There are tools that can forecast 101 rejection likelihood and offer claim modifications.

Borrow Winning Strategies: Mirror arguments from triumphant appeals. For example, when US Patent No. 10,885,241 faced “mathematical concept” objections, the defense pivoted to non-mathematical aspects, securing approval. There are also tools that can help you fetch proven arguments.

Choose Discretion over Valor: If there’s a significant risk of a 101 rejection, consider refraining from filing. It’s essential to evaluate the feasibility and potential return on investment before taking the leap.

Navigating the patent process requires foresight and strategy. Proactively avoiding 101 rejections saves time and money, streamlining the patent experience. Over time, these tactics offer a roadmap for future applicants, lending some predictability to an often-uncertain domain.

However, these shortcuts can sometimes make the rules around patents even harder to understand. While some attorneys adeptly circumvent these pitfalls, others struggle, potentially withholding innovative breakthroughs from society. Moreover, specialized law firms often charge higher fees for their expertise. Worryingly, the looming fear of rejection may stifle the very spirit of American innovation.

Proposed Legislative Reforms to the Section 101 Conundrum

In the U.S. patent landscape, two standout bills are the Patent Eligibility Restoration Act (PERA) and the PREVAIL Act.

PERA seeks clearer patent eligibility boundaries, while PREVAIL harmonizes Patent Trial and Appeal Board (PTAB) procedures with the district courts, setting a “clear and convincing” benchmark for a finding of invalidity and requiring the PTAB to interpret claims using their “plain and ordinary” meaning. While neither has passed, PERA especially has sparked intense debate.

PERA, backed by Senators Thom Tillis (R-NC) and Chris Coons (D-DE), aims for sharper patent clarity by eliminating court-made patent exceptions, articulating clear categories for unpatentability, and urging a comprehensive review of patent claims, regardless of novelty.

Many believe PERA 2023 could benefit Artificial Intelligence, medical diagnostics, and biotech sectors. Some have noted weaknesses, like key provisions buried in the preamble rather than the body, potentially weakening its courtroom standing. Positive feedback led to PERA 2023 evolving from its 2022 predecessor, including term revisions and clause additions.

Detractors worry about potential hikes in patent trolling and innovation costs that could affect public access.

Reforming patent law can be a game-changer. By clearing up the confusion from inconsistent rulings, innovators in fields like AI and medical diagnostics can feel more secure and driven. Knowing that their novel work is protected encourages more groundbreaking advancements. This refreshes the trust in the patent system, making it a strong ally for today’s innovators.

Still, there’s always a flip side. While aiming for clarity, we might end up with new gray areas or rules that can’t keep up with rapid tech changes. And there’s a fine line between protecting innovations and stifling the growth that comes from building upon others’ ideas. Yet, with the immense benefits on the table, these challenges seem manageable in the grand scheme of things.

Parting Thoughts

The U.S. patent landscape is in flux, with stakeholders navigating intricate challenges while awaiting clearer legislative direction. For the United States to maintain its innovative edge, a balanced approach, respecting both inventors and the broader societal needs is crucial.

Personally, I believe patent decisions should be handled by tech experts, placing the power back with the USPTO.

Image Source: Deposit Photos
Author: AntonMatyukha
Image ID: 263037972 

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Join the Discussion

5 comments so far.

  • [Avatar for B]
    B
    October 13, 2023 08:32 pm

    @ Anon “ What — exactly — is “respect for broader societal needs” that is being invoked for “balance”…? ”

    I dunno, maybe something about genders and the Patriarchy.

  • [Avatar for Anon]
    Anon
    October 8, 2023 08:43 am

    Without defining such a critical term (especially in light of the negative influences — and yes, one can read that as the number of Trojan Horses — in most all recent legislative initiatives), Mr. Chou’s article does not rise above pabulum.

    Specifically, his concluding ‘call to action’ of, “The U.S. patent landscape is in flux, with stakeholders navigating intricate challenges while awaiting clearer legislative direction. For the United States to maintain its innovative edge, a balanced approach, respecting both inventors and the broader societal needs is crucial.” is simply unhelpful.

    It is Lemming-speak.

    What — exactly — is “respect for broader societal needs” that is being invoked for “balance”…? As we (and by this I mean the we that is knowledgeable enough to recognize the Trojan Horses) have seen, certain “stakeholders” DO NOT WANT the US Patent system to protect disruptive innovation, and only all too often, the mantra of “broader societal needs” is but a gossamer sheep skin over the wolf of Efficient Infringers.

  • [Avatar for PTO Indentured]
    PTO Indentured
    October 6, 2023 02:12 pm

    @Anon

    Hmm, perhaps more of a Filet Mignon style “Steakholder”?

  • [Avatar for Pro Say]
    Pro Say
    October 5, 2023 02:32 pm

    Some good thoughts and excellent approaches / recommendations.

    Yet: “balanced approach” = patent pablum for the IP masses

    The fact is that anything less than the return of patent protection for all areas of innovation is worse than a fool’s errand; with no new best-of-intentions-yet-fatally-flawed attempts at doing so (e.g., PERA).

    Abolish Section 101. Strip SCOTUS and the CAFC of patent case review authority.

    And watch American innovation once again flourish.

  • [Avatar for Anon]
    Anon
    October 5, 2023 02:18 pm

    Mr. Chou,

    Please define “stakeholders.”

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