The Patent Eligibility Requirement of 35 U.S.C. Section 101, a Series (Third Post)

Written by Ben Esplin

My Premises

This series continues to rely on two fundamental premises: first, that the Alice/Mayo test for subject matter eligibility under Section 101 is administered using separate and logically discrete frameworks by the USPTO in examining patents and the Federal Courts during patent enforcement; and second, that this "dual approach" to the Alice/Mayo test has been an almost unmitigated disaster. The first newsletter demonstrated how this dual approach has degraded examination quality at the USPTO due to lack of judicial oversight[1]. The second newsletter explored how this approach undermines the presumption of validity under 35 U.S.C. § 282[2]. This third newsletter examines another fundamental problem: the disruption of the conventional "ecosystem" that has traditionally made legal tests in Patent Law predictable and administrable.

The Traditional Patent Law Ecosystem

The conventional ecosystem for legal tests in US Patent Law includes two separate streams of appellate cases that flow to the Federal Circuit: appeals from patent enforcement cases in Federal District Courts and appeals from USPTO rejections. The diversity of these two channels has traditionally led to legal tests for patentability that can be administered predictably and consistently. However, the Alice/Mayo test has disrupted this ecosystem, and the lack of diversity in appellate channels is one of the reasons this test, at present, is fundamentally broken.

Appeals from Patent Enforcement in Federal District Court

In Federal District Court patent enforcement cases, judges serve as both the adjudicators and, frequently, the fact-finders of these disputes. However, judges trained in engineering or science who understand the technologies underlying patent disputes are exceptionally rare. Research shows that only 7.35% of federal judges have educational backgrounds in science and technology fields, creating what scholars have termed a "two cultures" problem in patent adjudication.

Despite this technical knowledge gap, federal judges possess extensive training in legal argument and the application of laws. These judges typically have practiced as attorneys for years, if not decades, before ascending to the bench. This legal training provides them with sophisticated understanding of legal precedent, the doctrine of stare decisis, and the hierarchical nature of legal authority—concepts that form the bedrock of Western legal systems. Their expertise lies in parsing complex legal arguments, weighing competing interpretations of statutes and case law, and crafting reasoned judicial opinions that respect established precedent while addressing novel legal questions.

USPTO Appeals

The USPTO presents a markedly different institutional competency profile. Patent examiners, including most Supervisory Patent Examiners (SPEs), Supervisory Patent Examination Research Examiners (SPREs), and Quality Assurance Specialists (QUAS) personnel, are not lawyers and lack formal training in legal rhetoric. This is not an indictment of their intelligence or capability, but rather an acknowledgment of their different professional training and expertise.

Patent examiners' educational backgrounds reflect rigorous technical and scientific training requirements. To qualify as a patent examiner, candidates must possess at least a bachelor's degree in specified scientific or engineering fields, including aeronautical engineering, biochemistry, bioengineering, computer science, electrical engineering, mechanical engineering, materials science, and numerous other technical disciplines. This technical training provides examiners with deep understanding and sophistication regarding technology in general.

Through their examination work within consistent technical areas, patent examiners develop expertise that often exceeds the level of skill of a person of ordinary skill in their respective arts. They become intimately familiar with the technological landscape, prior art, and technical developments within their specialized domains. However, this technical expertise comes without the legal training that would help them understand, appreciate, and respect fundamental principles of Western legal systems such as stare decisis, the precedential value of legal opinions from different courts, and the hierarchical nature of legal authority.

Patent examiners have not undergone the rigorous legal education that teaches students to write according to legal custom for grading by legal faculty, nor have they been trained in the art of legal argument and statutory interpretation that forms the core of legal practice. While they receive training in the Manual of Patent Examining Procedure (MPEP) and USPTO-specific guidance, this training does not substitute for the comprehensive legal education that teaches the broader principles of legal reasoning and precedent that govern the American legal system.

Conclusion

The Alice/Mayo test has created an unprecedented situation where one of the two traditional channels of appeal—USPTO appeals—operates with institutional competencies that are fundamentally misaligned with the legal nature of the inquiry. Federal District Court judges, despite lacking technical training, possess the legal expertise necessary to understand and apply complex legal frameworks developed through appellate precedent. Patent examiners, despite possessing superior technical knowledge, lack the legal training necessary to properly understand and apply the nuanced legal framework that the Alice/Mayo test represents.

This divergence in institutional competencies explains why the USPTO has developed its own framework for the Alice/Mayo test that is logically inconsistent with the judicial approach. It also explains why appeals from USPTO rejections under Section 101 have virtually disappeared—the USPTO's framework operates in an institutional environment that lacks the legal sophistication to engage meaningfully with Federal Circuit precedent.

The traditional patent law ecosystem depends on the interplay between these two different institutional competencies, each contributing their strengths to the development of workable legal tests. The Alice/Mayo test has disrupted this ecosystem by creating a legal test that requires legal sophistication the USPTO inherently lacks, while simultaneously being applied to technical subject matter that Federal District Court judges often struggle to understand. Until this fundamental mismatch between institutional competencies and the demands of the Alice/Mayo test is addressed, the current dysfunction will persist.

At Esplin & Associates, we recognize these institutional realities and have developed strategies that work within both frameworks while preserving options for our clients in both USPTO proceedings and potential future litigation. If you would like to discuss how these insights might benefit your company's patent portfolio, please do not hesitate to reach out for a consultation.