statutory subject matter

USPTO & Congress to Tackle 101

As we close out 2018, there may be some hope on the horizon for those confounded by the current state of patent eligibility determinations under 35 U.S.C. § 101.

On the legislative side, Senators Coons (D-Del) and Thom Tillis (R-N.C.) will host a closed-door meeting tomorrow, Dec. 12th, to discuss potential legislation to rework the definition of patent eligibility. Invited to this meeting are a number of large players from the tech community (Google, Amazon, Apple, Qualcomm) and life sciences industry groups (PhRMA, and the BIO).  When it comes to this particular topic, this is like trying to broker a deal between the Hatfields and the McCoys; but, it’s a start.

The Hill meeting comes on the heels of recent bar association proposals to Congress on possible 101 changes, and undoubtedly, consistent lobbying from impacted industries.

The same hue and cry has been resonating with the USPTO. Director Iancu has been promising new 101 guidelines that translate step 1 of Alice into a simple determination of whether the claims are directed to one of the categories of judicial exceptions. But even if this is the case, unpatentability would only exist where the claim provides a practical application of such an exception. While certainly greatly simplified, it remains to be seen if regulatory guidelines can drive change external to the agency.

With grandiose legislative initiatives like Coons’ STRONGER Patents Act withering on the vine, it looks as if Congress is moving to a more focused agenda for 2019.

Stay tuned.