The Patent Eligibility Requirement of 35 U.S.C. Section 101, a Series

Written by Ben Esplin

My Premises

This piece relies on two premises: first, the Alice/Mayo test for the subject matter eligibility requirement of Section 101 is administered by US Courts using a framework that is fundamentally different than, and logically inconsistent with, the framework used by US patent examiners supposedly for this same test; and, second, that this “dual approach” to the Alice/Mayo test has been an almost unmitigated disaster. Readers who disagree with either of these premises, if any exist, are encouraged to contact me directly for spirited debate.

How Most Patent Law Tests Are Administered

Legal tests in Patent Law in the United States are refined and (to some extent defined) by decisions issued by the Court of Appeals for the Federal Circuit (“CAFC”). While these legal tests are ultimately defined by Supreme Court precedent, the Supreme Court is reticent to grant certiorari in Patent Law cases. This effectively provides wide latitude to the CAFC to find workable applications of legal tests derived from the few Patent Law cases heard by the Supreme Court.

For every other legal test which controls patentability in US Patent Law, there are two channels through which appeals make their way to the CAFC: (1) appeals from decisions made by judges in Federal District Court cases, and (2) appeals of rejections made by the United States Patent and Trademark Office (“USPTO”) in patent applications preventing the grant of a patent. These two channels are very different, and for other legals tests in US Patent Law the diversity between the two channels creates a steady and varied set of cases which allows the Federal Circuit to effectively moderate and refine its precedent, which then controls application of such legal tests in both the USPTO and the Federal Courts. At a future date, I will devote more time to specific attributes of these two different channels of appeals, and how they function somewhat independently to maintain the “quality” of US Patent Law, in conjunction with the CAFC. Here, the focus is on the disruption of one of these channels (appeals of rejections made by the USPTO) and the impact of this disruption to US Patent Law.

How The Anomalous Administration Of The Alice/Mayo Test Is Degrading Examination Quality At The USPTO

Since the USPTO has adopted its own framework for administering the Alice/Mayo test, there are almost no decisions by the CAFC on appeals of rejections from the USPTO. This is not an argument or contention, it is simply a fact. This means the administration of the USPTO’s framework for administrating the Alice/Mayo test, which is fundamentally and logically inconsistent with the framework employed by the CAFC, has effectively evolved without any oversight or refinement by the CAFC.

A practical result of this lack of traditional judicial oversight of the USPTO for a legal test that controls patentability is that all arguments against a USPTO rejection for lacking patentable subject matter must be based solely on the USPTO’s own guidance, some of which is codified in the Manual for Patent Examination Procedure (“MPEP”). Attempting to refute a USPTO rejection using a precedential decision from the CAFC involving the Alice/Mayo test is futile, because patent examiners do not follow CAFC cases, do not understand why CAFC precedent should be more significant than the MPEP, and have not received effective training on basic features of the framework for administering the Alice/Mayo test used by the CAFC. This results in a terrible cycle in which any logical inconsistency present in some internal USPTO training, or ambiguity in the language of the USPTO guidance, is perpetuated in rejections across many patent applications with almost no mechanism for systematic, meaningful oversight.

An example of one such logical defect present in many USPTO rejections is that while the CAFC has been crystal clear that the Alice/Mayo test requires a determination of whether the claims are “directed to” an abstract idea, most USPTO rejections fail to consistently and coherently articulate any idea. Instead, most USPTO rejections characterize the allegedly abstract idea to which claims are supposedly directed in multiple ways (with multiple meanings), and usually at least one of them is not grammatically correct or semantically decipherable. When challenged on this issue in Examiner Interviews, examiners have been known to state that consistent and cohesive identification of an idea which is allegedly abstract and to which the claims are supposedly directed, is not necessary under the USPTO’s framework for the Alice/Mayo test. When this challenge to a rejection is made on the record, it is common for examiners to simply ignore it, or produce counterarguments which amount to gibberish.

Conclusion

Again, this is merely an example of how the lack of meaningful judicial oversight of the USPTO in administering the Alice/Mayo test, caused by the current dual approach to the Alice/Mayo test, has corrupted examination at the USPTO. This piece is not the first to characterize the Alice/Mayo test as catastrophic, nor will it be the last. But it is important for the Patent Bar to stop pretending the USPTO’s approach is compatible with the approach employed in the Federal Courts. Judicial oversight of government agencies like the USPTO is an important aspect of the US legal tradition, and the absence of this essential check on USPTO authority in this challenging legal test is having harmful, widespread impact to patent rights in the U.S.

At Esplin & Associates, we have developed our own approach to the current framework employed by the USPTO for the Alice/Mayo test which addresses this example issue with current USPTO rejections, and others we frequently see. While “winning” these cases has been challenging to this point, our approach includes both short-term and long-term strategies for gaining allowance and patent protection for inventions previously deemed to lack patent eligible subject matter by patent examiners at the USPTO. If you would like to discuss our approach, and how it could be employed to benefit your company, please do not hesitate to reach out.