In January, the USPTO announced it would seek comments on the new Guidance it had published on patent subject matter eligibility. We have previously discussed this Guidance and won’t repeat ourselves here. Instead, this post will highlight the wide range of views expressed by the thousands of comments that the USPTO received. Although the comment period ended on March 8, the USPTO cautioned that its web page posting the comments might not be complete for a couple of weeks thereafter. By now, all the submitted comments likely have been posted so it’s time to take a look at them.
Not surprisingly, both the “new Guidance is great” and the “new Guidance doesn’t follow Alice” camps were very well represented.
Comments Supporting the Guidance
The Licensing Executives Society offered nothing but praise for the Guidance, stating that it “answers the call for greater clarity, certainty, and adherence to traditional notions of patent eligible subject matter in a practical and prudent manner that better ensures society will reap the full benefit of our patent system, and we fully support its full implementation.” LES expressed concern that recent precedent has “increased risk and uncertainty,” the effect of which “can be expected to diminish American innovation.” LES praised the Guidance as going a long way toward enhancing innovation, business creation and economic activity, stating, “LES is of the view that legislation will nonetheless be necessary to fully achieve these objectives … We encourage you to work with your colleagues in Congress toward that end.”
The Intellectual Property Owners Association likewise wasted no time in making its position clear: “IPO supports the overall intent of the 2019 Guidance to provide examiners with a way of finding eligible subject matter consistent with Supreme Court guidance, rather than articulating myriad ways to reject a claim as ineligible.” While the IPO detailed several areas in which the Guidance “could benefit from further analysis and clarification,” these were mainly areas in which further refinements, ongoing updates, and more detailed definitions might be provided to make it easier for examiners to apply the Guidance.
The Pharmaceutical Research and Manufacturers of America specifically praised various aspects of the Guidance for providing clarity in areas that had been confusing. PhRMA particularly pointed out the benefit of the Guidance in clarifying “that a claim is not ‘directed to’ a judicial exception that is ‘integrated into a practical application of the exception.’” A prior Bilski Blog post discussed various ways that the phrase “directed to” could be interpreted and how different interpretations could lead to quite different results.
Likewise, biopharma companies submitted supportive responses. Amgen’s comments unambiguously supported the Guidance but simply asked for “additional examples with fact patterns relevant to biopharma patents” with additional corresponding training of examiners. Genentech’s comments echoed this request. And Novartis chimed in similarly, also praising in particular one aspect of the Guidance: “[W]e believe one of the most critical aspects of the Revised Guidance is the paragraph advising examiners that sometimes ‘it is the combination of elements that provide the practical application’ rather than an ‘additional element’ alone, and that ‘examiners should give careful consideration to both the element and how it is used or arranged in the claim as a whole’” (emphasis original).
In the tech space, IBM seemed primarily to commend the USPTO for starting the important conversation about eligibility and not waiting for Congress to act. In agreeing with the “spirit” of the Guidance, IBM repeatedly emphasized that “confusion surrounding subject matter eligibility will remain until Congress acts on a legislative approach.” From the big to the little in tech, BrainThrob Laboratories (in the data/computer science space) pleaded with the PTO adopt the Guidance, stating, “It would be a huge mistake to discard, water-down, or dismiss these proposed guidelines.” BrainThrob urged that without the additional certainty provided by the Guidance, such companies would be compelled to “seek alternatives to protect our technology by concealing it and protecting it under the shroud of trade secrets.”
Comments Rejecting the Guidance
Compared with the organizations discussed above, the Electronic Frontier Foundation had quite a different view. EFF, on behalf of “its more than 39,000 dues-paying members,” said that the Guidance “effectively instructs examiners on how to narrow the Alice v. CLS Bank decision instead of how to apply it correctly,” and calls it “contrary to law.” EFF faulted the Guidance for defining ineligible abstract ideas to include only mental processes, mathematical formulas, and methods of organizing human activity; EFF asserted that cases have identified others “that do not neatly fit into those three narrow categories.” EFF also asserted that the Guidance creates “an entirely new and unprecedented step” for eligibility. EFF argued that even if the Federal Circuit can resolve patent-eligibility as a matter of law at the first step, “the same is not true for examiners,” who EFF argued should “conduct the full, two-step patent-eligibility analysis in the first instance” to fend off “a loophole that allows applicants to avoid the inventive concept requirement.” EFF noted that the Guidance sets up a situation in which “examiners will apply a substantially different test than district courts.”
More generally, EFF argued that “Alice has been a critical tool” in helping software developers and users “defend against meritless patent lawsuits and litigation threats.” EFF attributed a rise in R&D spending on “software & Internet” as attributable to Alice; it said the Guidance would “guarantee that patents on basic ideas continue to issue despite Alice, and thus continue to tax and impede research and innovation….”
EFF’s attempt to elicit input from opponents of the guidelines also experienced significant success. The organization’s “Save Alice” campaign provided model language for detractors to paste into their comments, and many individuals did just that. There were about 2,500 comments submitted to the USPTO by individuals, and a sampling suggests that the vast majority of these comments were cut-and-paste from the text EFF suggested for this campaign. By way of comparison, in the “pro-Guidance” camp, a far smaller but still significant number of comments were cut-and-paste from campaigns of one or more inventors’ associations. The number of bespoke comments from individuals paled in comparison to the cut-and-paste numbers.
Also somewhat critical of the Guidance was the Software & Information Industry Association. SIIA noted that its “members have benefitted greatly from the patents they own. Yet they also rely on the limits of patent protection, as those limits preserve and protect their ability to innovate. As such, SIIA’s collective membership sits at the crossroads of the countervailing interests….” SIIA asserted that synthesizing just a few categories from the judicial decisions resulted in pairings of cases and categories that “may or may not fit.” SIIA proposed “a fourth category to capture all precedent,” thereby allowing examiners to reject claims more directly based on a prior judicial opinion. SIIA said that with such a category, examiners would have more freedom to make initial rejections in appropriate circumstances without the need for higher level approval. In addition, SIIA worried that, “By specifying that the abstract idea must be ‘recited on [its] own per se,’ the 2019 Guidance may encourage clever drafting efforts to avoid explicitly reciting an exception in the claim.” SIIA saw this as a departure from prior guidance and the caselaw. Finally, SIIA said that the USPTO “should be clearer with respect to the specificity of the computer implementation necessary to amount to an integrated practical application.”
The Internet Association expressed similar concerns, saying that the Guidance “creates a structural bias against ineligibility rejections when the claims-at-issue do not fit neatly into the categories provided.” IA also sought clarification on the categorization in the Guidance, asserting for example that, “The ‘mathematical concepts’ category, if interpreted in the strictest sense, may not capture the breadth of the caselaw, which extends the abstract idea exception to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis.” Like the SIIA, the IA was concerned about the way the Guidance links eligible subject matter to improvement in the functioning of a computer or other technical field. “The Guidance appears to stretch too far beyond the Alice safe harbors when it extends eligibility to the mere use of a judicial exception ‘in conjunction with a machine or manufacture’ or in ‘a transformation or reduction of a particular article.’” The IA further suggested that the Guidance “recognize the legal distinction between claims reciting a result or function without specifying the mechanism that achieves that result or function and claims that recite a technological advance.”
Additional Comments Suggesting Improvements to the Guidance
While the American Intellectual Property Law Association comments were largely supportive of the Guidance, they suggested a number of areas where increased coverage or clarity would be helpful. To begin with, AIPLA noted that the “distillation” of case law in the Guidance resulted in a “framework [that] is necessarily imprecise.” That said, AIPLA suggested either expressly dealing with diagnostic methods or stating that the Guidance does not apply to such methods. The AIPLA found half a dozen or so phrases used by the USPTO in the Guidance unclear, and in particular called for the guidance to include the word “and” in the phrase “well understood, routine, conventional” as taken from Berkheimer. A prior Bilski Blog post examined this issue extensively. AIPLA also agreed with the Guidance that “a mental process that ‘cannot be practically performed in the mind’ should not be considered an abstract idea.”
The ABA’s Section of Intellectual Property Law had quite similar comments—generally supportive but suggesting areas where further clarification would be helpful (and worrying that the Guidance may not adequately address “the judicial exceptions applicable to the life sciences industry”). The ABA comments, however, included a strongly worded paragraph stressing that the guidelines are just that and do not amount to substantive rulemaking, much less law, writing, “This is why the Section strongly supports efforts to enact a legislative amendment to section 101 that resolves the ambiguity and confusion that has been injected into the eligibility determination by Supreme Court and lower court jurisprudence. Legislative reform is needed to restore predictability to the patent system and maintain incentives to invest in future technologies and discoveries.”
The National Association of Patent Practitioners provided yet a third voice suggesting that analysis of Tech Sector and Life Sciences tests should be separately stated. NAPP’s comments stated, “Discussion of that difficult area [computer-related claims] separately from biotech and other ‘judicial exceptions’ is necessary and helpful; we believe that the PTO has for too long tried to use generalized language that overlooks explicit application of Section 101 principles to this field, yielding much confusion.” NAPP was also concerned with language in the Guidance stating that it cannot be enforced by applicants: “If an examiner makes a rejection under Section 101 in violation of the Guidance, what is an applicant to do? Is it really true that the applicant cannot cite the Guidance in an appeal brief to demonstrate error and expect the Board to follow it?”
Some of the more interesting comments relating to the Guidance came from Alice Corporation itself (“AC” for clarity, as used in those comments), penned by its managing director, Ian Shepherd (also inventor of the claims at issue in Alice). AC saw the Guidance as raising a number of “profound questions” such as “If a claim, any claim, including one considered to be directed to a ‘fundamental economic principle’, is found to be novel (102), non-obvious (103) and sufficiently enabled (112) – and I’ll add here, also not unreasonably preemptive of possible future inventions – how could it possibly be considered patent ineligible under the revised guidance?” (emphasis original) The AC comments suggested that “cascading conceptual flaws in SCOTUS’ reasoning” as well as the “attempt in Alice to establish a single patent eligibility test” are the underlying causes for “the gymnastics a reader of the revised guidance is required to perform” (emphasis original). Perhaps the most interesting comment from AC is found buried in a footnote: “After it has formulated its Alice-replacement patent eligibility tests (and these are adopted by Congress), I suggest that SCOTUS should then terminate its future judicial exception declaratory powers. At this point, the Court’s work … could be considered to be done, leaving it to limit itself to evaluating US law in light of the Constitution, not making it.”
The comments of BSA | The Software Alliance refreshingly admitted that “BSA members have a variety of perspectives” and therefore raised for the USPTO a number of questions to consider in connection with the Guidance, primarily calling for additional clarity regarding various phrases used in the Guidance. Clarity was likewise sought from the Computer & Communications Industry Association. CCIA worried that “some aspects of the Guidance could be misread so as to be non-compliant with existing case law.”
While the above is by no means a comprehensive review of the various comments that the USPTO received, it is sufficient to show how many (often conflicting) perspectives emerged.
The breadth of comments that the USPTO has received will serve two very important purposes. First, it will help the USPTO to fine-tune the Guidance based on the collective experiences of those who provided comments. Perhaps more importantly, though, these comments have provided extremely helpful juxtaposition of concerns and interests that Congress can use as it ponders revisions to Section 101. An IP subcommittee of the Senate Judiciary Committee has recently convened meetings with stakeholders toward possible legislative action. Senators Thom Tillis of North Carolina and Chris Coons of Delaware in particular have signaled that congressional action is needed, and this sentiment has been echoed widely by others in both the House and the Senate who are looking at patent subject matter eligibility. The USPTO’s decision to take a position on potentially ambiguous terms and uncertain procedures has certainly helped bring to light a number of important perspectives, jump-starting a crucial phase of the legislative process.
*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.