Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!

First, earlier this summer the USPTO announced that it would be revisiting the Revised Patent Subject Matter Eligibility Guidelines issued under Director Iancu. This was a dead giveaway that a larger legislative effort was afoot. Reason being, those guidelines were designed to be patent friendly, and since then, the CAFC has indicated it will not follow such (not surprisingly). While certainly making examiner life easier, and greasing the skids for fewer 101 problems at the agency, issuing patents that will not pass 101 muster in the real world is not solving the real problem. So what can possibly be accomplished by revisiting guidelines that already improve matters within the agency? Well, the agency can communicate that the problem is still not fixed. In this way, when the inevitable bills drops, you create a legislative environment of need and perhaps get some agency ideas out there for inclusion/discussion.

Earlier this week, Senator Tillis announced his effort to reform 101. The bill (here) is largely a position paper on the wants/needs of bio/pharma as Tillis is very closely aligned with these interests. That is, the proposal looks to overrule Myriad and Mayo – its main goal is to bolster the patenting of diagnostics. Aside from that, the positions appear to just tee up the present debate about what is “technology” and what else should be patentable. So, a shot across the bow so to speak, to get Tech and others to the table.

Given the coming mid-terms, and the long road to building any legislative enthusiasm for this issue again, this is the first step in a long, contentious journey. With Senator Leahy retiring this year, and the potential for a shake-up in control this November, I’m looking forward to the many CLE panels in the years ahead on this topic. On the bright side, my out-of-office email response will be improving.