It is Time to Tell Your Eligibility Stories

by Dennis Crouch

At the behest of several leading Senators, the USPTO has begun a study on the “Current State of Patent Eligibility Jurisprudence.”  To that end, the agency is seeking comments from the public that will be due by Early September.  The agency would like input from various stakeholders, including inventors, owners, investors, licensees, users, and patent attorneys. The agency appears to be looking from key insight regarding the actual experience of parties involved — telling a story of the impact of patent eligibility doctrine.

Acting Director Hirshfeld has made clear in some settings his predilection for broad subject matter eligibility, and the wording of the questions suggest that the Agency is looking for reasons to decry the current state of narrowed eligibility.

The exact topic of comments are not limited, but the Agency has created a list of 13 questions that may guide input. I have paraphrased:

  1. How does eligibility jurisprudence impact business in your tech area (be specific)?
  2. What impacts have you experienced because based upon changes over the past decade? This  includes patent prosecution, enforcement, R&D, employment, innovation, sales, competition, etc.
  3. How is eligibility jurisprudence impacting the following: quantum computing; AI; precision medicine; diagnostic methods; pharmaceutical treatments; and other computer-related inventions?
  4. How does US eligibility jurisprudence differ from your experience in other leading patent regimes?
  5. Provide details on cases that were denied based upon eligibility in the US, but were allowed in other leading patent regimes.
  6. Explain if US eligibility doctrine has shifted research/investment/jobs to other parts of the world.
  7. Explain if US eligibility doctrine has shifted IP strategy toward trade secrecy.
  8. Explain if US eligibility doctrine has shifted how you license or purchase patents.
  9. Explain how US eligibility doctrine has shifted your litigation strategies.
  10. What is the impact of US eligibility jurisprudence on the “global strength of US intellectual property.”
  11. What is the impact of US eligibility jurisprudence on the US economy as a whole.
  12. What is the impact of US eligibility jurisprudence on particular market areas?
  13. How is the public impacted by the state of US eligibility jurisprudence?

Read more here: https://public-inspection.federalregister.gov/2021-14628.pdf

I expect that the comments here will also be relevant to the views of the solicitor general that will be submitted in Am. Axle.

Submit comments via the Federal Register portal using Docket No: PTO-P-2021-0032.

 

 

 

21 thoughts on “It is Time to Tell Your Eligibility Stories

  1. 5

    Why did they include Question 4? How could it be helpful to have answers to that question? Perhaps on the issue of compliance of the USA with its obligations under GATT-TRIPS to afford full-blown patent protection in “all fields” of technology?

    1. 5.1

      Your last question is NOT what the question is about (not to say, that your last question lacks interest).

      The thrust here is simple: prior to the AIA (in those “bad old days” of powerful patents), the US was the Gold Standard.

      Even with (or because of) the “per se” and “as such” mile wide loopholes, I would dare say that software innovation is easier to obtain and protect outside of the US, and we have squandered our Gold Standard position.

      I see this as nothing more than an attempt to circle around the obvious — without having to openly admit the mistakes.

  2. 4

    Anti-competition goal is met when patent killing judges time and time again fail to provide a fair shake to companies trying to enforce their patent rights against big tech who year after year refuse to take licenses and use the ptab and certain judges in their home states as weapons to invalidate patent claims previously granted by the uspto and many times also upheld by the ptab.

    Stifling completion is bad and patent killing to protect the bigs is anti-competitive!

    1. 4.1

      It will be interesting to see how the Liberal Left respond to Biden’s latest initiatives (which disappointedly do not address the white elephant of patent denigration).

  3. 3

    Democracy can be messy. Eligibility is definitely a political question.

    1. 3.1

      … as opposed to a judicial one…?

      Hmmm.

  4. 2

    I know! I know! Instead of merely requesting comments, why don’t we have, oh, I don’t know . . . say three days of public hearings . . . with lots and lots of witnesses . . . and an ocean of written submissions!

    Oops; sorry! That’s right! We already did that!

    But hey — you all know how much we enjoy our comments an’ studies an’ such!

  5. 1

    Director Lee started a 101 study that quietly disappeared. I wonder what will be the fate of this study. I also wonder where they post the job openings for “conclusion driven studies that may or may not ever be released to the public.” Seems like a good gig.

    1. 1.1

      Not just Director Lee, but as Pro Say notes at comment 2, the very people of the Senate who have exhorted the Office to engage in this (repeat) venture already have obtained a load of stories.

      Perhaps this (merely) reflects Marty’s comment on “messiness” in that those Senate members did not want to do the right thing and instead seek cover against recriminations of the well-monied Efficient Infringers.

    2. 1.2

      It is comments like this that make me certain that Ben is more than just an examiner.

      1. 1.2.1

        I hear you. It is clear that Ben ascribes to the anti-patent views, and at every opportunity seeks to denigrate full protection of innovation.

        That being said, there certainly are tones in Prof. Crouch’s write-up that Ben’s comments sounding in “conclusion driven” accurately reflect.

        The drum beat of anti-patent is loud and persistent.

      2. 1.2.2

        Thanks, I guess?

        1. 1.2.2.1

          Ben, you are not your average examiner to be sure. Not sure what or who you are but you are not just an examiner.

          1. 1.2.2.1.1

            He’s also Batman

            1. 1.2.2.1.1.1

              You’re just jealous.

            2. 1.2.2.1.1.2

              Batman understands how innovation works.

              1. 1.2.2.1.1.2.1

                Bat dad is better than Batman.

        2. 1.2.2.2

          Ben, What is your allowance rate, 2%?

          1. 1.2.2.2.1

            Lol – which would go along with Malcolm’s view that Ben “knows in-NO-vation.

            (Ben and Malcolm have long been ‘a couple’ – dating back to the DISQUS comment control days)

          2. 1.2.2.2.2

            Nah, it’s a good deal higher than that. If the things I’ve said suggest otherwise to you, I’d note that most of my opinions on the law are prescriptive rather than descriptive.

            1. 1.2.2.2.2.1

              Prescriptive….

              Based on what prescription?

              Certainly not an understanding of innovation (no matter what Malcolm asserts), nor an understanding of the US history of having a strong innovation protection system.

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