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:
- How does eligibility jurisprudence impact business in your tech area (be specific)?
- 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.
- How is eligibility jurisprudence impacting the following: quantum computing; AI; precision medicine; diagnostic methods; pharmaceutical treatments; and other computer-related inventions?
- How does US eligibility jurisprudence differ from your experience in other leading patent regimes?
- Provide details on cases that were denied based upon eligibility in the US, but were allowed in other leading patent regimes.
- Explain if US eligibility doctrine has shifted research/investment/jobs to other parts of the world.
- Explain if US eligibility doctrine has shifted IP strategy toward trade secrecy.
- Explain if US eligibility doctrine has shifted how you license or purchase patents.
- Explain how US eligibility doctrine has shifted your litigation strategies.
- What is the impact of US eligibility jurisprudence on the “global strength of US intellectual property.”
- What is the impact of US eligibility jurisprudence on the US economy as a whole.
- What is the impact of US eligibility jurisprudence on particular market areas?
- 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.