Experts consulted by IAM generally support a recently announced USPTO revisit of patent examiner guidance on 35 USC 101 (Section 101) relating to subject matter eligibility. But there’s a range of views on how and whether it can succeed.
Sources point to several areas for possible review.
“Since the last revision was in 2019, it does seem like a good time to revisit the guidance,” says Xsensus’s Andrew Harry. “There have been a lot of court decisions, both at the Federal Circuit and district courts, since then and the guidance should be updated to reflect them.” This would hopefully lead to higher patent quality and increased certainty in the courts, Harry adds.
“The trouble with any examiner guidance is that it’s an attempt to distil a very complex body of case law for application by an examination corps that is mostly made up of scientists and engineers and not attorneys,” Harry explains.
The Federal Circuit, district courts, Supreme Court and Congress struggle to provide clarity in this area, so it’s not hard to imagine how it is applied by 8,000+ different patent examiners, he notes. “Establishing a smaller team within the USPTO to handle the disposition of these matters would increase consistency and quality, and allow for this dedicated team to stay abreast of the latest developments in the 101 landscape,” Harry states.