By Donald Zuhn --
In a forum held last month on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received additional input from the public regarding that guidance. The forum, which ran almost four and a half hours, began with some opening remarks by Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy at the USPTO, and then Raul Tamayo, Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO, followed Mr. Hirshfeld's presentation with an overview of the Interim Guidance. The remainder of the forum was devoted to two groups of public presentations -- in which the presenters were essentially divided into those on the life sciences side (group one) and those on the hi-tech side (group two) -- and an "open participation/question/answer" session, in which attendees were allowed to give statements or ask questions of USPTO representatives participating in the forum. A replay of the forum can be viewed here.
Summaries of Mr. Hirshfeld's and Mr. Tamayo's presentations were provided in Part I of our series on the forum, and highlights from the first group of public presentations were provided in Part II of the series. Today, we provide some of the highlights from the second group of public presentations, the majority of which addressed how the Interim Guidance dealt with the Supreme Court's decision in Alice Corporation Pty. Ltd. v. CLS Bank International. The second group consisted of ten presenters: Bob Stoll of the Partnership for American Innovation (PAI); Jim Crowne of the American Intellectual Property Law Association (AIPLA); Robert Hardy of the Council on Governmental Relations (COGR); Micky Minhas of Microsoft Corp.; Thomas Isaacson of Novak Druce Connolly Bove + Quigg LLP; Kate Gaudry and Angel Lezak of Kilpatrick Townsend & Stockton LLP; Robert Sachs of Fenwick & West LLP; Sigram Schindler of TELES Patent Rights International GmbH; and Clark Jablon of Panitch Schwarze Belisario & Nadel LLP.
Leading off for the second group of presenters was the former Commissioner of Patents, now representing PAI, which describes itself as "a group of companies that represent diverse industries working together to promote a climate of technology innovation by telling the story of IP's value." Declaring the Interim Guidance to be "in quite good shape," and a "substantial improvement" with respect to nature-based products, Mr. Stoll indicated the Office had made "good on its promise to improve" the Myriad-Mayo guidance. However, he encouraged the Office to expand on its guidance regarding the impact of the Alice decision.
While pointing out areas in the guidance where the Office had positively responded to criticism, Mr. Crowne, who represented the AIPLA, noted that some work still needed to be done. In particular, he argued that there was a "certain circularity" to the Office's definition of claims that are "directed to" a judicial exception and those "involving" a judicial exception. He also contended that in defining "directed to" as including "reciting," the Interim Guidance included "vestiges of the original guidance" that continued to distort the examination of subject matter eligibility.
Mr. Hardy, who noted that in addition to COGR, he also represented the Association of American Universities (AAU), Association of Public & Land Grant Universities (APLU), and Association of University Technology Managers (AUTM), commended the Office for its "valiant effort" in navigating the "maze of sometimes contradictory court decisions" to craft the Interim Guidance. He observed that the Federal Circuit's decision in In re BRCA1- and BRCA2-based Hereditary Cancer Test Patent Litigation ("Myriad II") indicated that the CAFC had a different way of looking at the markedly different standard than the way the standard was discussed the Interim Guidance. He also encouraged the Office to develop additional examples and provide analysis of those examples, as well as to provide more clarification for claims reciting combinations of nature-based products.
After Mr. Hardy, the remaining presenters in the second group focused on the impact of the Interim Guidance on subject matter in the Alice space. Despite this focus, however, several presenters offered suggestions that seemed to resonate with practitioners and applicants in the Myriad/Mayo space. For example, Mr. Isaacson presented five proposals for improving the evaluation of subject matter eligibility for software applications, but which would likely improve the eligibility analysis in any Art Unit. His five suggestions included: (1) requiring examiners to use claim language in their analysis and not stray from the claim language (stating that "[t]he 'name of the game is the claim' must remain"), (2) placing a prima facie burden on examiners to provide some articulated reasoning with some rational underpinning to support ineligibility determinations (akin to the requirement for making obviousness rejections), (3) requiring examiners to produce evidence to support ineligibility determinations, (4) requiring examiners to consider applicants' rebuttal evidence, and (5) lowering the § 101 hurdle, which he asserted was too high and should instead be "very low." A copy of Mr. Isaacson's presentation can be obtained here.
Ms. Gaudry and Ms. Lezak presented data collected from business method art units, and concluded that the data indicated that following the Alice decision, the pendulum had swung too far towards rejection of applications directed to business methods.
They also noted that in the span of ten months, the allowance rate for business method art units had dipped from 24% in January to 5% in July to 3% in October. A copy of Ms. Gaudry's and Ms. Lezak's presentation can be obtained here.
The next presenter, Mr. Sachs, confessed to being "a critic of the Office," and expressed surprise that the Office had agreed to let him present. He explained that he had reviewed all of the Alice-related comments and had found that eighteen of the comments suggested that the Office require examiners to provide factual evidence and reasoning on the record in order to support a § 101 rejection. He noted that this is precisely what had been done in Bilski and Alice, and argued that examiners should not be permitted to make unsupported conclusory statements when finding a claim to be patent ineligible.
Mr. Sachs also noted that the Alice-related comments were in agreement that the focus of an eligibility analysis should be preemption, i.e., that preemption was the core of § 101. While pointing out that the Alice-related comments had all asked for more examples, what was also needed was more explanations. With respect to the Office's analysis of the cases, he argued that "the cases are inconsistent," which is "why we are here." A copy of Mr. Sachs' presentation can be obtained here.
The penultimate presenter in the second group, Dr. Schindler, warned the Office that they had "no chance" of settling the subject matter eligibility issue, and contended that the Supreme Court Justices were "excellent" and "brilliant" and had issued decisions in Alice and Myriad that were simply not understood. He also argued that while the Supreme Court was "absolutely on the right track," the Federal Circuit had "screwed it up" and would "sooner or later understand that they're dead wrong" on subject matter eligibility. A copy of Dr. Schindler's presentation can be obtained here.
For additional information regarding this topic, please see:
• "USPTO Holds Forum on Interim Guidance -- Part II," February 18, 2015
• "USPTO Holds Forum on Interim Guidance -- Part I," February 2, 2015
• "USPTO Issues Post-Alice Abstract Idea Examples," January 28, 2015
• "Impact of Interim Guidance on Business Method and Software Claims," December 17, 2014
• "USPTO Issues Interim Guidance on Subject Matter Eligibility," December 16, 2014
• "USPTO to Release Revised Subject Matter Eligibility Guidance," December 15, 2015