26 July 2017
Washington DC
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.

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Universities should be more flexible
18 August 2017 | London | Reporter: Barney Dixon
Perceived barriers could potentially be torn down by the Aarhus University’s proposed ‘patent free’ research zone, but academia should not be wedded to a single solution, according to Sean Jauss, partner at Mewburn Ellis
Ericsson sues Wiko over standard-essential patents
17 August 2017 | Stockholm | Reporter: Barney Dixon
Ericsson has sued smartphone maker Wiko for infringement of standard-essential patents for 2G, 3G and 4G technology
Ropes & Gray hires leading PTAB litigator
16 August 2017 | Washington DC | Reporter: Barney Dixon
Ropes & Gray has recruited leading US Patent Trial and Appeal Board litigator Scott McKeown
Trump fires forward in China IP investigation
15 August 2017 | Washington DC | Reporter: Barney Dixon
US President Donald Trump has signed a memorandum asking the US Trade Representative to examine whether China should be investigated for alleged intellectual property malpractice
Nintendo Switch ‘infringes’ Gamevice patent
14 August 2017 | California | Reporter: Barney Dixon
Handheld game controller company Gamevice claimed that the Nintendo Switch infringes its 2015 patent for a slip-on game controller used with a smartphone or tablet
BPO takes radical approach to patent backlog
14 August 2017 | Brasília | Reporter: Barney Dixon
The Brazilian Patent Office has published a proposal that intends to eliminate patentability analysis
Sanofi sues Merck for patent infringement
11 August 2017 | New Jersey | Reporter: Barney Dixon
Sanofi has filed a lawsuit against Merck Sharp & Dohme Corp, alleging infringement of two patents for a diabetes drug