Guest Post by Victoria T. Carrington and Professor Jorge L. Contreras.
Background
It should be no surprise to readers of Patently-O that many are unhappy with the Supreme Court’s jurisprudence regarding patent eligibility under Section 101 of the Patent Act. In response to various calls for “reform” of patent eligibility jurisprudence, on March 5, 2021, Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR), and Christopher Coons (D-DE) requested that the US Patent and Trademark Office (PTO) conduct a study regarding public views on “how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.” The Senators also asked the PTO to evaluate the responses and provide a detailed summary of its findings by March 5, 2022. The PTO released its public request for information (RFI) on July 9, 2021. The original deadline for response was September 7, 2021, which the PTO extended until October 15, 2021. A total of 145 comments were submitted before the deadline. In advance of the official assessment, we have reviewed and tallied these public comments for those who are eager for the results in advance of the official release.
Methodology
We reviewed each submission that was made in response to the PTO’s 2021 Patent Eligibility RFI, as posted by the USPTO on Regulations.gov. Information that we noted and tracked included submitter name, submitter industry/specialty, date submission received, submitter location (if listed), and the general tenor of the submitter’s comments.
Findings
Demographics
There was a total of 145 submissions. Some individuals submitted two comments, and one individual submitted four identical comments. Fifteen submissions were anonymous. We combined multiple submissions from the same commenter, yielding a total of 137 unique comments.
Figure 1 below shows the breakdown of industry affiliation of submitters. The largest group of submitters (28%) were patent attorneys and/or law firms that did not have a clear industry affiliation. Companies and trade associations were broadly classified as “High Tech” (18%) or “Life Sciences” (14%). Submissions classified as “Business” (11%) identify those made by venture capitalists and submitters focused on finance or entrepreneurship like the Market Institute. “Other” (8%) industries represented included cross-industry trade associations such as the Association of University Technology Managers (AUTM) as well as individuals, organizations, and companies that otherwise did not readily fit into the other specified classifications such as the mining conglomerate Rio Tinto, and Acushnet, a which makes golf equipment and apparel.
Sixty-three submitters specified a location. California had the highest number of submissions (11). Six submissions came from outside of the U.S.: Canada, Japan, Macedonia, Switzerland, and two from the United Kingdom.
Analysis of Positions
We analyzed the content of each submission to determine whether the submitter generally viewed current jurisprudence regarding patent eligibility in a positive or a negative light or adopted a neutral stance. Figure 2 below illustrates the breakdown of submissions among these categories, excluding 19 submissions that did not actually address the question of patent eligibility.
Figure 3 shows the comparison of the general tenor of submissions made by industry classification.
Below we discuss these findings in more detail.
Neutral Comments
Four submissions adopted a neutral standpoint, neither praising nor criticizing current patent eligibility jurisprudence. One such comment was submitted by Professors Maya M. Durvasula, Lisa Larrimore Ouellette, and Heidi L. Williams. It effectively critiques the empirical validity of the PTO study itself: “Many have argued—largely based on anecdotes or descriptive data—that recent changes in patent eligibility caselaw have either increased or decreased innovation. Here . . . we argue that neither view is supported by the available empirical evidence.” “It is unclear whether limits on patent eligibility increase or decrease innovation.” “Current evidence does not demonstrate whether the Alice/Mayo framework is good or bad for social welfare in contested fields [specifically the biomedical and software markets].”
Positive Comments
Forty submissions (27.6%) describe current patent eligibility jurisprudence in a positive light, noting general satisfaction with the Supreme Court’s eligibility case law and its application within the market. Notable commenters in this camp include the American Civil Liberties Union (ACLU), Google, and the Association of American Medical Colleges (AAMC).
The ACLU also criticized the framing of the PTO study, observing that “[t]roublingly, the RFI seems to adopt the same framing as the Senators’ request, presupposing that patent-eligibility jurisprudence lacks clarity and consistent application and that this lack of clarity is causing harms. Neither the Senators’ letter nor the RFI provides any basis for the allegation that the law is inconsistent or unclear . . . .” The ACLU points to the fact that there is a high affirmance rate of subject matter eligibility decisions made by district courts and the PTAB to argue that current patent eligibility jurisprudence is relatively clear. It also points to statements in Federal Circuit Opinions showing that judges are able to apply 101 in a clear and consistent manner.
Google commented that “robust data supports that the balance in our IP system has allowed patenting in emerging technologies to flourish. . . . We urge the PTO to reject the premise set forth in the RFI that ‘the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing and artificial intelligence.’”
From the life and health sciences perspective, the AAMC drew on public health and access considerations, noting “that law and policy must protect and balance the public good, including access to timely patient care, with proprietary rights in support of science and technology, particularly in the fields of medicine and public health. We believe that these principles are reflected in current jurisprudence.”
Negative Comments
Eighty-two submissions (56.6%) expressed at least one major concern with the state of current patent eligibility jurisprudence. The two primary concerns were that (1) eligibility requirements are too unclear and/or uncertain and (2) too many useful inventions are currently ineligible for patent protection based on current eligibility requirements.
International Business Machines (IBM) specifically critiqued the judicially created ‘abstract idea’ exclusion from patent eligibility, noting that it “continue[s] to unnecessarily generate wide uncertainty about the validity of information technology patents and to undermine the patent incentive. It is a significant concern to innovators and patentees, who rely on the patent system to protect their investment in computer-related innovations. This uncertainty reduces public confidence in issued patents, making it harder for inventors to benefit from those patents.”
The “too-many-inventions-are-ineligible” camp includes the IP Law Section of the State Bar of Nevada. It specifically highlights that there has been an “[o]verly broad application of” In re Smith to reject electronic gaming machine inventions under Section 101.
Novartis’s submission sums up both reasons most submitters are unsatisfied with patent eligibility: the uncertainty and the ineligibility of specific important inventions.
Figure 4 illustrates the relative frequency of these different negative arguments made regarding patent eligibility.
Conclusion
This preliminary assessment shows a range of views expressed by public commenters in response to the PTO’s Section 101 Patent Eligibility Study. There is clearly no majority or consensus view, meaning that any legislative response to the dissatisfaction voiced by some over current judicial eligibility decisions should be taken with care and provide further opportunities for public input and debate.
The data for this post is archived at Victoria Carrington, 2022, “Public Comments on PTO’s 2021 Patent Eligibility Study”, https://doi.org/10.7910/DVN/DQWHHO, Harvard Dataverse, V1.
I know! I know!
How ’bout Congress spending a few days hearing from all stakeholders?! You know — lots and lots and lots of them. That’s sure to clear things right up!
THEN they can retake the constitutional patent eligibility authority SCOTUS usurped from them (and that the CAFC misapplied in their quest to swallow all of patent law) . . . and restore the U.S. patent system to it’s previously world-leading position!
Excelsior! Watch out world! America! Is! Back!
ACLU: “judges are able to apply 101 in a clear and consistent manner.”
Oh, please. No one honestly believes that. Including you folks.
Surprisingly and sadly, the ACLU doesn’t appreciate the fact . . . that those for whom they fight hardest for . . . are those which have the greatest difficulty in obtaining patents for their innovations. The eligibility morass SCOTUS and the CAFC has created pushes this worthy goal . . . even further from their reach.
Thank you for the nice analysis authors, but your conclusion . . .
“any legislative response to the dissatisfaction voiced by some over current judicial eligibility decisions should be taken with care and provide further opportunities for public input and debate.”
. . . misses the mark. Badly.
We’re long past the need for any more public input and debate.
What’s needed now is action. Legislative and/or SCOTUS action.
Action to restore critically-important patent protection to ALL areas of innovation.
All. Areas.
“No one honestly believes that. Including you folks. Including the judges themselves — who say so in their decisions.”
>THEN they can retake the constitutional patent eligibility authority SCOTUS usurped from them
Worse, even if Congress did all that, SCOTUS probably would just usurp it back again. SCOTUS has already admitted that the “judicial exceptions” are non-statutory (and thus, ultra vires??)
Good point. That is why any real solution requires amending Title 28 to remove certiorari jurisdiction for appeals from the CAFC.
As I have provided previously — many times (marty needs to pay attention).
I can’t see more action by the courts as being helpful. (I honestly have no idea what’s patentable any more.) I think it’s up to Congress.
The authors conclude 65% negative comments to 32% for the status quo to be “clearly no majority”. This clear 65% majority is mischaracterized as “dissatisfaction voiced by some”. Give me a break.
At this point, with the volume of federal court litigation that has turned on the meaning of “abstract idea”, a situation where there is no working definition of “abstract idea” in statute or precedential appellate opinion can only be an unconstitutional deprivation of due process for both litigants and the public.
Bilski must rank as one of the most useless opinions in the history of the court.
But again, the wide range of opinions & positions demonstrated by the RFI comments demonstrates that nobody has a handle on how to solve the problem.
The problem has to be reframed before a solution can be found. It should be reframed as a problem of information, not “abstraction”.
Ideas are information. Laws of nature are information. Patent claims are information.
The patent act does not treat the utility, sufficiency, or provenance of information in ways that reflect the reality of the Information Age
“the problem has to be reframed”
Expressly not.
And expressly by you with no authority nor concern for the terrain of patent law.
“The patent act does not treat the utility, sufficiency, or provenance of information in ways that reflect the reality of the Information Age”
The patent act is — on purpose — AGNOSTIC to the type of innovation that we may encounter.
This is expressly on purpose and is tied to the very nature OF innovation.
One of your problems marty is that you are so wed to your desired goal that you just cannot get out of your own way.
Mmm hmmm. Not agnostic about printed matter. Not so agnostic about business methods. Not agnostic about what encompasses the Useful Arts other than custom & knowing it when they see it…
It ain’t just patent law & it ain’t just public policy. It’s always a mix.
Anyway, you got nothing. Not one contribution to the solution but to claim, mor on ically that there is no problem at all, despite thousands of learned people who see big problems. Sad.
In addition to the above (Greg’s ‘solution’ was first advanced by me),
LOL – I have already responded to your ‘printed matter’ comeback. Have YOU followed up with my counter point to that with your patent counsel?
And you are absolutely dead wr0 ng on “ Not one contribution to the solution but to claim, mor on ically that there is no problem at all, ”
First – I HAVE provided solutions – including the (with all due humility) the wondrous Kavanaugh Scissors solution. And secondly, you YET AGAIN falsely ascribe a position to me – I have LONG pointed out problems with the judicial legislating from the bench in the eligibility portion of the legislative patent law.
Sad? Your ham-fisted attempts to NOT listen is what is really sad. But you be you.
Crying waaa that the processes of common law should cease to function, or that the Supreme Court would ever settle for any kind of patent related jurisdiction stripping is pointless. Those things can never happen.
Meanwhile, small alterations to the body of existing common law of eligibility and/or Congressional action on 100(b), which clearly needs a rewrite anyway because its a tautology, are within the realm of the possible & practical.
Your “comeback” on printed matter is nonse nse as usual. The current common law on that subject is entirely normative – because they know it when they see it.
Technical diagrams: made by the hand of man and useful. Outside the patent law why again?
And you counseling others to listen. mmmm hmmmm
“processes of common law should cease to function,”
WRONG – again, you are getting in your own way, as my comments are directed merely to the proper functioning and Constitutional limits on judicial authority. There is NO “cease to function.”
“or that the Supreme Court would ever settle for any kind of patent related jurisdiction stripping is pointless. Those things can never happen.”
LOL, WRONG AGAIN – just because you have limits (severe) on legal solutions does NOT make them into non-solutions.
As to jurisdiction stripping, that very much can happen and the Supreme Court cannot change that, as that is a Constitutional power allotted to Congress (for non-original jurisdiction matters, of which patents are such).
“100(b), which clearly needs a rewrite anyway because its a tautology”
Third strike for you – and I have previously explicated why it is not a tautology.
“Your “comeback” on printed matter is nonse nse as usual.”
Fourth strike – have you even bothered to understand what I have stated on the matter?
“Technical diagrams: made by the hand of man and useful. Outside the patent law why again?”
Asked and answered.
“And you counseling others to listen. mmmm hmmmm”
Your disdain here is unwarranted. I certainly do listen to others. I happen though to know quite a bit, and my listening is just not the same as blind acceptance. I PUSH BACK – as I can given my level of knowledge.
.
Again – rather than blather your disdain, try taking these things and discussing them with your patent counsel.
Let me know how that works out for you.
Yes, that MAY mean that you have to grow up and recognize things that get in your way – but you will be better off for doing so.
Unrelated:
In December the Commerce OIG released an external investigator’s report on the patent examination process.
link to oig.doc.gov
The assessments and recommendations are marvelously unhelpful.
Take for example this insightful gem:
“USPTO does not have a reliable means of measuring or controlling examiner
consistency.”
What a Hot Take! I’m so glad the OIG spent 1.3 million dollars on this report.
And yet – if you listen merely to the Office itself, you would come away with a completely different take (and its super high “quality”)
Your sarcasm is a little overstated.
IBM >>>”This uncertainty reduces public confidence in issued patents, making it harder for inventors to benefit from those patents.”
The more I’ve thought about 101 the more I think that IBM’s comment is the most salient. Think about it. You are an inventor. You have a pretty good idea of the quantum that you took to invent and what was around before or can search it.
So you get a level of confidence in whether or not it will be invalidated at the DC. But with 101 no one really has any idea other than there are slam dunks that you know will be invalidated. I think this applies to IPRs too with 103 where the uncertainty is much greater with an IPR than at DC.
Supreme Court decisions should not be countenanced as “driving social welfare.”
Leastwise in patent law, as it is a given that authority for any such law writing (which includes law writing of the Common Law law writing variety outside of actual interpretation) was STRICTLY assigned to one of the three branches of the government — and not the judicial branch.
Bottom line is that nobody knows what an “abstract idea” is and this allows decision makers to do whatever the heck they want. This is compounded by the fact that the statute itself doesn’t even mention the term “abstract idea.” It was legislated from the bench. If you’re going to legislate from the bench (which you shouldn’t do), at least don’t do it in a vague and ambiguous manner.
Most of US patent law was originally legislated from the bench, and then codified (or decidedly not, in a few cases) by Congress afterwards.
Any such past violations of the Separation of Powers does not justify the continued illicit practice of such.
… particularly given there is a statutory section directly on point. This isn’t some blue-water legal problem.
We are in agreement.
Overall good information is provided here. Thanks.
I’m a bit surprised however that you did not comment more directly on the notable divide in the submissions by industry type, namely the overall favorable opinion (14-7) offered by the life sciences industry submitters compared to more negative view submited by those in the other industries or by law firms.
I am shocked at the favorable breakdown from the life sciences industry. That really makes no sense to me.
I suspect it has far more to do with which 21 members of the life science community responded rather than being reflective of the community as a whole.
Correct.
Greg, the vast majority of unpatentable subject matter claim invalidations are for broad functional software related “abstract” claims under Alice et al and rarely impacting the life science industry. The life science industry is more impacted by the very different Mayo-type unpatentable subject matter decisions, but there actually far less of those. So, logically somewhat less complaints in this study.
It would not have surprised me if both the life science comments and the software comments were net-negative, but there were simply fewer life science comments. I am surprised, however that the few life science comments submitted were net-positive.
Perhaps the small sample size simply lends itself to an unrepresentative sampling?
See 1.1.2.1.
Oh that’s not so hard to organize. A little hypo to illustrate: Say the question were: “how do you feel about pharmaceutical patents?” 20 generic drug companies and 10 brand drug companies respond. Probable result: 2/3 “pharmaceutical companies” are critical of patents. Shocking. Not so very different here.
Good point. I know plenty of my life science colleagues are as aggrieved by the present state of §101 as I am, so I am surprised to think that only generics would feel moved to offer comments.
Surprised, given all the prior comments here, that there were not more official comments about litigated patent claims being shot down on FRCP 12(b)(6) preliminary motions as Alice-type “abstract” [?] unpatentable subject matter claims which should have been better 103 evaluated?
Surprised, given all the prior comments here, that there were not more official comments about litigated patent claims being shot down on FRCP 12(b)(6) preliminary motions as Alice-type “abstract” [?] unpatentable subject matter claims which should have been better 103 evaluated?
Not surprised at all. The USPTO has nothing to do with how 12(b)(6) motions for failure to state a claim are handled in District Court.
Good old Google, anti-patent.
This was “a study on the current state of patent eligibility jurisprudence in the United States, and how the current jurisprudence has impacted investment and innovation. ” I.e., not just about what the PTO does or does not do or get amended re some application claims on that subject, which is far less important than what courts do to issued claims being enforced.
Fair counter point Paul.
Then again, this type of “reach out” should not be expected to generate a legitimate study of effects. Selection bias alone (those who may choose to respond) skews any meaningfulness.
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