By Donald Zuhn –-
In a notice published in the Federal Register (81 Fed. Reg. 71485) last month, the U.S. Patent and Trademark Office announced that it will be holding two roundtables in order to obtain public input on patent subject matter eligibility in view of recent decisions by the Supreme Court and Federal Circuit. The first roundtable will be held from 1:00 to 5:00 pm EST on November 14, 2016 in the Madison Auditorium at the U.S. Patent and Trademark Office in Alexandria, VA, and the second roundtable will be held from 8:00 am to 5:00 pm PST on December 5, 2016 in Paul Brest Hall at Stanford University. The Office's notice also included a request for written comments regarding the specific topics to be addressed in each roundtable.
In the notice, the Office states that "[o]ver the past six years, the Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law and continue to generate substantial public debate." The notice briefly summarizes each of these cases, pointing out that:
These cases continue to have a substantial effect on patent eligibility in the United States. On the one hand, they have overturned decades-old USPTO practice regarding patent eligibility of isolated genes, placing the United States at odds with the practices of major trading partners, including Europe. On the other hand, the Mayo two-step test has generally raised the bar for patent eligibility in all fields of technology.
The notice indicates that at the first roundtable, the Office will be seeking public feedback regarding improvements to the Office's existing subject matter eligibility guidance and training examples. In particular, the Office is seeking feedback on the following topics:
1. Suggestions to how to improve the Office's subject matter eligibility guidance, particularly the three recent memoranda discussed above;
2. Comments on the May 2016 Life Sciences examples and their effect on prosecution of patent applications in the life sciences, and suggestions of additional examples, or technology areas in which examples would be helpful;
3. Suggestions on how best to make examiners aware of newly issued judicial decisions, and how best to incorporate recent decisions holding claims eligible, such as Enfish, Bascom, Rapid Litigation Management, and McRO, into the Office's subject matter eligibility guidance; and
4. Concerns on how the Office's subject matter eligibility guidance and training examples, or how court decisions, are being applied by examiners.
Although the deadline to submit a request to speak at the first roundtable has passed, the Office's notice indicates that the public is invited to speak at the first roundtable by appearing in person at the USPTO headquarters in Alexandria, VA or at one of the four USPTO Regional Offices. An agenda for the first roundtable can be found here. Written comments regarding the topics to be addressed at the first roundtable can be submitted by e-mail to firstname.lastname@example.org.
At the second roundtable, the Office is interested in facilitating a public discussion and receiving public feedback regarding larger questions concerning the legal contours of eligible subject matter under the U.S. patent system. In particular, at the second roundtable the Office desires (1) "to promote conversation on how the current section 101 jurisprudence is evolving; what the optimum legal contours for patent eligibility should be; and how best to achieve these goals"; (2) "to facilitate discussion and create a public record with relevant information on the actual or perceived impact of existing law on particular technology areas, and the effects on investment in research and development, and innovation generally"; (3) obtain "comments on whether developments in patent-eligibility law should be left primarily to the courts or whether other administrative initiatives are desirable"; and (4) secure input on "whether legislative changes are desirable and, if so, views on the elements of such changes."
The notice provides a list of eighteen questions on which it is interested in receiving views and comments from the public. The eighteen questions include the following:
1. How has the Supreme Court's interpretation of 35 U.S.C. 101 in the past several years affected the enforcement of patents and the development of subject-matter-eligibility law?
2. Should the patent statute be amended to further define the statutory categories of invention, i.e., process, machine, manufacture, and composition of matter?
3. Do you think there should be exceptions to patentable subject matter?
4. Should the patent statute be amended to define the judicial exceptions?
6a. Do you think that title 35 should be amended to revise the definition for the term "invention" and/or provide a definition for the term "discovery" along with specific examples of subject matter that should not be treated as an invention and/or discovery?
7. Does the concept of preemption, either separately or in the context of the Mayo two-step framework, capture useful insight in guarding against the issuance of overly broad patents?
8. What does the term "discovery" in sections 100 and 101 mean, and to what extent should a "discovery" be eligible for a patent?
9. What does the term "invention" in sections 100 and 101 mean, and to what extent should a non-naturally occurring product of human ingenuity qualify as an "invention" to be eligible for a patent?
10. To what extent should products that have been isolated from their natural surroundings as a result of human ingenuity be eligible for a patent?
11. To what extent should a "diagnostic method" be eligible for a patent?
12. Are there lines that can or should be drawn scientifically or legislatively between different types of compositions of matter for purposes of obtaining patent protection (e.g., between human genes and genes of other species)?
13. What particular inventions or specific types of technologies that should be patent eligible are not patent eligible, or are likely to be challenged as patent ineligible, under Mayo/Myriad?
14. Should patents be available for methods that do not involve a machine or a transformation?
15. If you support some form of "machine or transformation test," please identify the best expression of such a test.
16. To what extent should an invention that involves a business method be eligible for a patent?
17. To what extent should an invention that involves computer software be eligible for a patent?
18. What mechanisms, other than the judicial exceptions, can be used to prevent issuance of overly broad software or computer-related patents that cover wide swaths of economic activity?
Additional questions and information being sought by the Office with respect to the above questions can be found in the Office's notice. Those wishing to submit public feedback regarding any of the above questions are encouraged to review the notice in order to provide as complete and full response as possible.
Those wishing to speak at the second roundtable must submit a request to the Office by November 14, 2016. The Office's notice also indicates that the public is invited to speak at the second roundtable by appearing in person at the USPTO headquarters in Alexandria, VA or at one of the four USPTO Regional Offices. Written comments regarding the topics and questions to be addressed at the second roundtable can be submitted by e-mail to 101Roundtable2@uspto.gov.
Written comments related to either of the roundtables must be submitted by January 18, 2017. Both roundtables will be available for viewing via webcast. Additional information regarding the roundtables and submission of written comments can be found in the Office's notice. An agenda and webcast information for the roundtables can be obtained at the webpage for Roundtable 1 or the webpage for Roundtable 2.