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

Written by Ben Esplin

Quick Recap

This Series relies on two premises: first, the Alice/Mayo test for subject matter eligibility under Section 101 is administered using two separate and logically discrete frameworks by the USPTO in examining patents and the Federal Courts during paten enforcements, respectively; and, second, that this “dual approach” to the Alice/Mayo test has been an almost unmitigated disaster. In the First Post of this Series, it was argued the “dual approach” has degraded examination at the USPTO with respect to Section 101 because there is no effective judicial oversight of the USPTO’s administration of the Alice/Mayo test.

Another Negative Impact Of The Dual Approach

The use of separate frameworks for administering the Alice/Mayo test by the USPTO and the Federal Courts puts tension on the presumed validity of US Patents. Under 35 U.S.C. § 282, each claim of an issued US Patent is presumed valid. This presumption is generally recognized as being deferential to the expert analysis and examination received by patent applications at the USPTO. However, since the framework used at the USPTO to determine subject matter patent eligibility is inconsistent with and logically distinct from the framework used by the Federal Courts to determine subject matter patent eligibility, the effect of this supposed presumption is reduced, almost, to zero in some cases.

An Illustrative Inconsistency Between the Frameworks

One exemplary difference between the frameworks for administering the Alice/Mayo test is how each determines whether a claim is “directed to” one of the exceptions to patentable subject matter (i.e. an abstract idea, a law of nature, or a natural phenomenon). Under the framework of the Federal Courts, a concept the claim is “directed to” is identified, and then a determination is made as to whether this concept is one of the exceptions. By contrast, under the framework of the USPTO, an exception “present” in the claims is identified, and then a determination is made as to whether this is what the claim is “directed to.” If a patent examiner determines a claim is not “directed to” an identified exception, then the claim is deemed patent eligible without ever finding what the claim actually was “directed to.”

The logical inconsistency between these approaches results in the first finding made under the approach used by the Federal Courts not even being addressed in the USPTO approach for some claims deemed patent eligible. More specifically, the first finding of the judicial approach is a concept the claim is “directed to” (followed by a determination of whether this concept is one of the exceptions). On the other hand, using the USPTO approach, if a determination is made the claim is not “directed to” some exception supposedly present in the claim language, then the claim is deemed patent eligible without ever actually finding what the claim is “directed to.” The ability of a Federal Court to show deference to a decision of patent eligibility made at the USPTO is severely inhibited (if not rendered impossible) if the first finding the Court must make to administer the Alice/Mayo test has not even been reached by the USPTO during examination.

Conclusion

This is merely one example of how the separate frameworks for administration of the Alice/Mayo test used by the USPTO and Federal Courts make deference to USPTO decisions regarding subject matter patent eligibility under Section 101 challenging, if not impracticable for Courts. It is not merely inconvenient for a Court to presume correctness of USPTO findings under Section 101 because of different terminology or technical complexity, but instead it is literally impossible under some circumstances. This erodes the presumed validity of patent claims under Section 282, a supposed bedrock principle of US Patent Law.

One strategy we have employed for clients is preserving, at the USPTO, arguments which conform to the approach of the Federal Courts, rather than only presenting arguments within the USPTO’s framework. This tactic adds complication to prosecution, and measures should be taken to avoid distracting or confusing an examiner administering the USPTO’s framework. However, we believe it is worth doing to enhance options for combatting USPTO rejections on appeal. If you would like to discuss how this tactic might be employed in your company’s portfolio, please reach out for a consultation.