A Long Road Ahead: A Solo Entrepreneur's Perspective on the USPTO’s Roundtable I - Subject Matter Eligibility Guidelines

I am a solo entrepreneur. After twenty plus years in industry, I decided to take the risk and start my own business using my own capital. In the parlance of the law I am considered, almost affectionately, a micro-entity.

I knew I needed intellectual property protection and one of the first things I did was file for a trademark application. With my micro-entity status, I successfully prosecuted my own trademark application, without objection from the examiner. I also wanted to protect my underlying business process, and I assumed that my experience going through the patent prosecution process would go just as smoothly. I have come to learn otherwise.

As a micro-entity, getting my invention patented has proven to be a long and difficult road. With no political connections and very limited resources, it is painfully obvious that this system of multiple office actions, RCEs, and then perhaps appeals to PTAB and the Federal Circuit, was not designed for solo entrepreneurs. The complexity of the system put me at a particular disadvantage to the larger corporations who are clearly benefiting from my, now published, patent application.

From the beginning my application was rejected, and continues to be rejected, under Section 101, even though we have recently overcome all of the prior art rejections. As a result, I have become something of an accidental student of patent eligibility and as such was very interested in attending the USPTO’s Patent Subject Matter Eligibility Roundtable I on November 14, 2016. Prior to the roundtable, I had assumed that my application was something of an outlier, that there was something wrong with it and that was why it had been rejected. At the roundtable I learned that “it’s not me, it’s you” applies not just to exes but to the patent system as well.

As a first time attendee, I was encouraged by Under Secretary Lee’s opening remarks, particularly as they related to finding ways to make sure examiners were not only aware of newly issued judicial decisions (i.e. Enfish, Bascom, McRO, and Rapid Litigation Management), but to make certain that these decisions were being incorporated into the USPTO’s Subject Matter Eligibility Guidelines, and appropriately interpreted and applied to pending business method patent applications. Yet, my strong feeling of encouragement quickly dissipated when I noticed only four out of the 35 speakers who addressed this serious issue did so in a manner relative to micro-entities. I was further disenfranchised by the process when I realized that the USPTO did not provide any time for discussion or a question-and-answer segment at the conclusion of the “roundtable.”

The few speakers at the roundtable who did advocate on behalf of us “little guys” often mentioned how the “direct costs” negatively impacted micro-entities, focusing on the need for examiners to avoid using “blanket statements,” to be specific in their responses, and carefully ensure the law is being properly interpreted and applied on a case by case basis. As a solo entrepreneur, I couldn’t agree more with the need to “get it right the first time,” as this would substantially reduce direct costs for us. My impression is that the examiner’s first instinct is often to reject without any substantive reason, hoping we’ll simply abandon the process altogether, or better yet, pay the ever increasing, exorbitant fees (for me) involved in requests for continued examinations and the appeals process.

As any desperate and determined entrepreneur would likely do following attendance of this event, I made a plea to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO to consider the following important suggestions for future roundtables, particularly as they relate to micro-entities like myself:

  1. Strongly consider the points raised by speakers David Stein of the National Association of Patent Practitioners and Moti Barkan of HackNot, as they appear to embody the essence of my frustration as it relates to micro-entities with pending business method patents; particularly the direct cost impact for us when it comes to innovation and maintaining a competitive edge.
  2. Seek the counsel of trusted practicing attorneys to minimize the risk of error in interpretation and application of new judicial decisions before rolling out the training to examiners.
  3. Implement “best practices” for on-time delivery of analysis of new judicial patent eligibility decisions and have quality assurance systems in place to make sure all examiners in all units appropriately and consistently apply the law, regardless of the political climate.
  4. Take measures to empower the examiners to utilize the recommended tools to reach a quality decision without fear of “getting in trouble.”
  5. Address deficient 101 rejections received from examiners and incorporate accountability measures to ensure specific, sound, non-generic, substantive reasoning behind decisions to accept or reject proposed claims.
  6. Rather than increasing USPTO fees for micro-entities, consider reducing fees in an effort to help even out the playing field.
  7. Make an effort to improve transparency among the USPTO, micro-entities and the general public by encouraging meaningful roundtable discussions that include an open and honest question and answer segment.

While the above list is not all inclusive, I’m convinced taking these initial steps will help make the road easier to travel for micro-entities and equip us with the necessary tools to remain innovative and competitive.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.