Robert Stoll

In my previous article, I made a modest proposal for improving one aspect of patent examination by requiring applicants to identify support in the specification for new and amended claims. That suggestion was premised on my firm conviction – based on 34 years at the United States Patent and Trademark Office (USPTO) in roles ranging from examiner to Commissioner for Patents – that we must improve the quality of examination if we want the United States to remain on a par with patent offices in other leading jurisdictions such as Europe, Japan and China. I believe that the best, and perhaps only, way to do this is to move toward viewing examination less as an adversarial process and as more of a shared responsibility in which applicants work in partnership with examiners to improve examination. Continuing with that theme, I would suggest that the current fee-adjustment process presents another opportunity for applicants and the Office to work together to improve examination and strengthen our nation’s patent system.

The quality of issued patents drives the entire patent system. Valid patents fuel innovation, but invalid patents often have the opposite effect. Well-searched claims with clear boundaries, detailed disclosures with understandable teachings, and alignment with the proper statutes, rules and regulations, all contribute to a high-quality patent that an inventor can rely on and that appropriately apprises competitors and the public of the scope of the invention. Although the U.S. patent system overall is still arguably the best in the world, there is room to do things better. Instead of leading the world in issuing robust and reliable patents, we are at risk of being surpassed by China in the innovation arena. It is incontestable that many improvements to drafting and prosecuting of patent applications can be made by both the applicants and examiners to provide more certainty to the validity of issued patents.

A strong and predictable intellectual property system is crucial to protecting and promoting American innovation around the globe. It allows American businesses of any size to compete globally, creating millions of American jobs. Strong intellectual property rights provide a strong foundation for America’s role as the world’s innovation and technological leader, powering our world with the next generation of technology to help kids learn, to connect remote workers, provide better access to healthcare and help make our planet more sustainable. The role of innovation (from vaccines to communication technology, content creation, etc.) has never been more crucial than during the ongoing COVID-19 pandemic. The ability to protect what one creates or invents grows our economy and GDP, generates incentives to continue the innovation process, and makes our country safer and more secure from foreign adversaries.  

In withdrawing the 2013 statement, the new 2019 guidance by the DOJ, NIST and the USPTO states the obvious, i.e. that there is no difference in the law between F/RAND assured standard essential patents and all other patents. While some would have perhaps liked to break the unitarity approach of the patent system so as to weaken remedies against the infringement of essential patents, a legal system that would apply a different standard to standard essential patents as opposed to other patents would violate U.S. trade obligations.

I am sure that the justices of the Supreme Court did not anticipate the confusion they created when they issued their controversial decision in Alice Corporation v. CLS Bank in 2014. That case effectively upended well-established precedence when the Court unanimously held that a computer-implemented scheme for mitigating settlement risk was not patent eligible subject matter because the claims were drawn to an abstract idea, and that merely requiring generic computer implementation fails to transform the claims to eligible subject matter. The Court itself said their holding was to be narrowly construed, but in providing a vague, two-step test to determine whether something is patent eligible, they unleashed a world of hurt on some of our domestic industries seeking patents in cutting-edge technologies. The application of the Alice test to some of our health-related industries is having disastrous effects. On February 6, 2019, in a split decision, the United States Court of Appeals for the Federal Circuit (CAFC) found in Athena Diagnostics v. Mayo Collaborative Services that diagnostic methods are not patent subject matter eligible unless they embody a separate technical improvement beyond the correlation of certain antibodies in bodily fluids to particular diseases. In a footnote, the majority lamented that they felt compelled by Supreme Court precedence to render their decision, but recognized that protection of diagnostic methods would be for good for society. The Athena case does not portend well for the CAFC adoption of the recent USPTO guidance on Section 101. The courts will eventually be able to either put their imprimatur on those guidelines or discard them. The sooner that is done, the better.