Senators Tillis and Cotton Propose Sequenced Examination Approach

By Donald Zuhn --

On Monday, Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter to Drew Hirshfeld, the Commissioner for Patents at the U.S. Patent and Trademark Office, to propose that the USPTO conduct a pilot program on a sequenced approach to patent examination.  In their letter, Sen. Tillis (at right), the Ranking Member of the Senate Subcommittee on Intellectual Property, and Sen. Cotton (at left), a member of the Subcommittee on Intellectual Property, suggest that a sequenced approach to patent examination, in which applications are first examined for compliance with 35 U.S.C. §§ 102, 103, and 112, and then for compliance with 35 U.S.C. § 101, could "avoid unnecessary and inefficient rejections on grounds of patent eligibility."

The Senators express their concern that "by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101."  While stating that examination under §§ 102, 103, and 112 is based on "well-developed and objective criteria under the law," the Senators assert that "current patent eligibility jurisprudence lacks the clarity, consistency, and objectiveness the other grounds of patentability possess."  They argue that:

By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

In view of discussions they have had with USPTO officials, the Senators note that by using a sequenced examination approach, Applicants "rarely receive[] a rejection on grounds of patent eligibility," because "by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well."

The Senators provide three reasons why a sequenced approach to examination may improve the examination process.  First, they argue that a sequenced approach would "focus[] initial examination on the objective areas of patentability as opposed to the abstract, vague, and subjective questions of eligibility, leaving eligibility examination to a point in the process where it can be conducted much more effectively."  Second, a sequenced approach would "improve[] efficiency by avoiding the waste of valuable examination and applicant time on vague questions of patent eligibility as a threshold matter."  And finally, the Senators argue that a sequenced approach would "lead[] to stronger, more reliable, and higher quality patents by focusing first on the more rigorous and easy to identify standards of patentability."

The Senators conclude their letter by requesting that the Commissioner initiate a pilot program to determine whether a sequenced approach would be more effective and produce higher quality patents than the traditional compact examination approach.  They also ask the Commissioner to let them know by April 20, 2021 whether such a program will be implemented, and if the USPTO elects not to implement such a program, "provide us with a detailed explanation of why you will not conduct the requested pilot program."

Comments

[Francine DELGOFFE]

If it's not patentable in the first place, why do waste time and energy to assess prior art, inventive step or obviousness?

Pure waste of time, all of that because Mr Tillis and the patent mob wants to restore software patents at any costs.

[James Elmer]

This sounds wrong headed. First determine if an invention is patentable and then determine if it is patent eligible? If they are trying to focus on the ridiculousness of 101 caselaw there should be a better way. What applicant wants to take time to find out their invention is patentable only to then learn that it cannot be patented?

[sarah kagan]

Why are the senators shifting the burden to the USPTO? The USPTO is following the caselaw. Changing the USPTO procedure will not change how the courts determine validity.
The senators should be pulling up their socks and drafting and passing legislation that overrides the caselaw.

[Warren Woessner]

I agree with the above comments. The diagnostic claims at issue in Athena has already been found to meet all the criteria for patentability (Of course, the claims were in an issued patent) but then the Fed. Cir. tossed them as an attempt to patent a natural phenomenon. There is no reason to think that any pending application having diagnostic claims would fare any better, however the PTO examination proceeds.

[Karl P. DResdner, Jr. PhD and US Patent Agent]

The Senator Tillis and Senator Cotton proposal Is a bold and new sequenced approach to patent application examination where a patent examiner would evaluate claims of a patent application under Sections 102, 103, and 112 first. Last should be patent examination under Section 101. Siomple arguments for this and some other issues needed a fix are listed below.

1. Section 101 is in overuse mode by the USPTO and courts. This is hurting the US economy by denying patents (IP)and it drags out US patent application prosecution time. New US businesses are fragile at their start and have limited cash burn time. Investors shy away from such new companies if they lack IP. Without cash, the new business just ends. Without IP the investors then walk away. The start-up dies.

2. Without the survival of start-ups, the US goods consumer must settle for non-US products made in China and India or elsewhere They flourish in a large number of obvious ways, and they have freedom to operate and import. The US becomes the victim. Made in the USA becomes a no more. Take away US IP and this no more continues to expand. The US cannot afford to be just be a white-collar economy any longer. The private business model of the USPTO is a force driving this harm and can be fixed.

3. The USPTO needs to become a Federal Government institution so it can be in part government-funded. This change is needed urgently. The number of US patent applications each year is increasing and limiting a timely functionality of the USPTO.

4. It is important for a patent examiner to become familiar and more careful than currently they can given their per case time budget constraints. The Tillis and Cotton proposal would allow a patent examiner gets better educated about an application case. Examiners currently get only a few hours to do an office action. This is a USPTO operational mistake

5. Section 101 abuse by the USPTO and courts now helps the USPTO stay within an Examiner allocated patent examination time budget.
The time budget fuels the RCE (Request for Continued Examination) game by the USPTO. RCE proliferation is a means permitting the USPTO to initially do a more superficial examination rush job. RCE adds fees and so the examiner get more time to do their basic job. But this delays patent issuance. The USPTO is work overloaded and financially strapped. The RCE game serves simply as a USPTO survival game means. I have spoken to many examiners about this and they agree and feel trapped in this RCE game.

6. The Tillis and Cotton proposition is testable. The legal system (the Mount Olympus judiciary and white-collar lawyers should endorse the Tillis and Cotton proposal fuel. it a chance to level the playing field between applicants and the USPTO. The USPTO cannot fix itself alone and the legal system has no motivation to fix itself in a timely manner.

7. The bottom line is why wait for the USPTO to drown further. It is drowning badly. How good and how soon a USPTO system does the US need to be fixed. Immediately is my opinion for the US to return to being a competitive economic power and capable of being new technology leader.

[Sean Brennan]

The Senators' proposal seems akin to asking for your ID after you've been served the drink. The proper approach, as noted by so many, is to fix the law on eligibility.

[skeptical]

The end result does not - and cannot - change with this effort.

As such, this is simply a waste of time - and coming as it does from the person that has the power - and responsibility - of PROPERLY correcting the errors written into patent law by the judicial branch, I (sadly) am only more:

[Jim Voelelr]

I applaud Senators Tillis and Cotton for continuing to advocate this issue. The Senators provide excellent reasons for trying their proposed sequence approach.

It's important to note that the Senators are "requesting that the Commissioner initiate a PILOT PROGRAM to determine whether a sequenced approach would be more effective..." While we continue to wait for legislative action why not give the program a try?

[skeptical]

Mr. Voelelr,

Why not?

Easy - it is a waste of time, a placating fig leaf that simply cannot resolve the issue to which it is aimed for.

That you seem to want to buy the reasons 'for trying,' tells me that your patent judgment is not mature enough to see just why this is a waste of time.