Iancu: “Much More Work Needs To Be Done” On Section 101

At the 10th Annual Patent Law & Policy Conference late last month, USPTO Director Iancu announced that more USPTO guidance on Section 101 was forthcoming. As he explains, “the USPTO plans to issue guidance to help our examiners and applicants who struggle with these issues every single day”. Throughout his address, he focused on a few primary themes that will likely be reflected in the future guidance and bare taking note of moving forward.

First, he highlighted the importance of gaining clarity on §101 eligibility.  Citing to both historical records from James Madison and recent decisions from several Federal Circuit Judges, Iancu set out his goals for people to be able to understand the laws and predict outcomes. As he notes, “[F]or the IP system to work as intended, we must ensure that our laws are clear and that the IP rights we issue are predictable, reliable, and of high quality.”

Second, he emphasized the need to “keep invalidity rejections in their own lanes”. Lauding the Patent Act of 1952, Iancu praised the separation of rejections for applications as being not novel, as being obvious, or as being indefinite or too broad to be fully enabled, which were clearly laid out as separate in the text of the statute. Per his address, “The genius of the 1952 Patent Act was that it clearly categorized the conditions for patentability, in addition to and separate from the categories of invention.”

Finally, he explains that the judicial exceptions to 101 eligibility should be applied in a limited manner, specifying that “the judicial exceptions should address categories of subject matter that are not eligible per se, or on their own, no matter how inventive or well-claimed they are.” This limits the application of 101 to things that the Supreme Court has declared ineligible even if they satisfy every other requirement perfectly.

In addition to natural phenomena and laws of nature, Iancu identifies three categories of abstract ideas that fall under this umbrella.

“1. Mathematical concepts like mathematical relationships, formulas, and calculations.

2. Certain methods of organizing human interactions, such as fundamental economic practices; commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities.

3. Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.”

The current climate of rapid innovation has exacerbated the confusion. “We are all currently grappling with the eligibility of all sorts of technology, from things like toys that communicate with one another, to computer virus screening; from computer databases, to methods of treating various diseases. Now I am not expressing any view as to the ultimate validity of any particular claims drawn to these technologies. Such claims, if they are actually ‘directed to’ math or laws of nature or some other matter that the Supreme Court said is per se ineligible, might perhaps fail under 101.

“But without more, why would such technology be deemed as ineligible by itself? The Supreme Court has never held such technology, by itself, to be prohibited. And why should it be?”

By letting the separate rejections speak for themselves, Iancu hopes to reign in these judicial exceptions and allow for worthy technology to gain protection. As he puts it, “I think that we can overcome the current Section 101 morass if we carefully follow Supreme Court precedent, if we don’t allow the judicial exceptions to swallow the entire statute, and if we allow the rest of the statutes (102, 103, 112) to do the work they were meant to do.”

For the full remarks made by Director Iancu, click here


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