This morning, Patent and Trademark Office (PTOPatent and Trademark Office, informally used interchangeably with USPTO.) Director Iancu gave remarks at the Intellectual Property Owners Association (IPOIntellectual Property Owners Association, an association that represents the patent interests of major companies.) Annual Meeting. Perhaps unsurprisingly, given IPO’s efforts to legislatively overturn the Supreme Court’s recent cases reinforcing the bar on patents on products of nature and abstract ideas, Director Iancu’s remarks focused on patentableEligible to be patented. To be patent-eligible, an invention must fall into the categories listed in 35 U.S.C. § 101 (i.e., process, machine, manufacture, or composition of matter) and cannot be an abstract idea or a law of nature. subject matter—§ 101.
While the remarks aren’t formal guidance, what Director Iancu has described is concerning. Specifically, he states that the guidance would instruct examiners to “allow[] claims that include otherwise excluded matter as long as that matter is integrated into a practical application.”
The problem, of course, is that the Supreme Court has determined that that isn’t sufficient. In Mayo, the Court explicitly said that “one must do more than simply state the law of nature while adding the words ‘apply it.’” It’s inarguable that in Mayo, the law of nature was integrated into a practical application (determining an optimal dosage). But the Court held it to be ineligible.
This has been the Supreme Court’s view for quite some time. Forty years ago, in Parker v. Flook, the Court held that a formula for computing alarm limits in a catalytic conversion process was ineligible as claiming an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010.. Again, inarguably a practical application, but nonetheless ineligible.
Iancu’s proposed guidance gets it wrong because it describes the inquiry backwards. Iancu said “it does not matter if the ‘integration’ steps are arguably ‘conventional’; as long as the integration is into a practical application, then the 101 analysis is concluded.”
That’s the opposite of what the Court has held. Instead, the Court has directed the PTOPatent and Trademark Office, informally used interchangeably with USPTO. to decide if the claim was directed to an abstract ideaAbstract ideas are not patent-eligible subject matter. This judicially developed exclusion was most recently explained by the Supreme Court in Bilski v. Kappos, 2010., and if it was, to see if the other aspects of the claim were well-understood, routine, and conventional. [1][2]
If the PTOPatent and Trademark Office, informally used interchangeably with USPTO. shifts to the guidance as described in Iancu’s remarks today, the PTOPatent and Trademark Office, informally used interchangeably with USPTO. will be ignoring multiple Supreme Court cases. And the end result would be a PTOPatent and Trademark Office, informally used interchangeably with USPTO. repeating the mistakes of the early 2000s—issuing hundreds of thousands of patents on ineligible subject matter, leading to more court cases and chilling effects on innovation.
