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Potential for Clarity on the Horizon as to What is Patentable—USPTO Seeks to Improve Guidance for Innovators

By Erin E. Kaprelian

The newly-appointed United States Patent and Trademark Office (USPTO) Director Andrei Iancu testified before the House Judiciary Committee as part of an Oversight Hearing on May 22. As part of his testimony, Iancu discussed Section 101, which addresses what subject matter is patentable and what is not.

“In some areas of technology, it is unclear what is patentable and what is not, and that can depress innovation in those particular areas”, Iancu testified. And he is not incorrect. Between the existing case law and key patent cases such as Bilski, Mayo, Myriad, and Alice from the Supreme Court, and the refinement and application of these cases by the Federal Circuit, the current Section 101 guidance is challenging at best. Different Examiners often apply Section 101 in widely varying ways, with the result that whether or not an applicant can overcome the Section 101 hurdle can seem like luck of the draw. As a result, applicants may choose to not even file a patent application and risk having to contest a Section 101 rejection, as doing so can add significant time and expense to an already potentially expensive process. This particularly affects areas of innovation such as technology and life sciences—the guidance as to whether or not a new invention is patentable is simply not clear enough to warrant spending money on research, development, and the patent process.

Fortunately, Director Iancu and the USPTO have begun taking steps to provide some clarity. Earlier this year, a revision of the Manual of Patent Examining Procedure (MPEP) incorporating previous guidance for Examiners as to how precisely to apply—and not apply—Section 101 was issued. Even more recently, the USPTO provided further guidance to its Examiners regarding the “conventionality” analysis that is part of the Section 101 analysis. In his prepared statement to the House Judiciary Committee, Iancu notes that this “will increase the certainty and predictability of eligibility analyses.” And, perhaps most interestingly, Iancu indicated his willingness to work with Congress to revise Section 101 to account for the new technologies that have developed since the last time the language was amended in 1952.

Innovation remains the backbone of the US Patent Framework; with no innovation, there can be no patent protection, but without the possibility of patent protection, there can be no innovation. Director Iancu and the USPTO have taken the first steps to recognize that Section 101 provides a barrier to innovation due to its lack of clarity as to what is patentable and what is not. It remains to be seen whether the clarifications and guidance provided internally at the USPTO will prove sufficient, or whether Congress, together with the USPTO, will tackle the underlying framework of Section 101 itself.

Please contact your Davis & Kuelthau attorney, the author noted above or our Intellectual Property practice chair linked here if you have any questions.