PublishedSeptember 24, 2018

Getting The Future Backwards: Iancu’s Comments On § 101 At IPO

This morning, Patent and Trademark Office (PTO) Director Iancu gave remarks at the Intellectual Property Owners Association (IPO) Annual Meeting.  Perhaps unsurprisingly, given IPO’s efforts to legislatively overturn the Supreme Court’s recent cases reinforcing the bar on patents on products of nature and abstract ideas, Director Iancu’s remarks focused on patentable subject matter—§ 101.

While the remarks aren’t formal guidance, what Director Iancu has described is concerning.  Specifically, he states that the guidance would instruct examiners to “allow[] claims that include otherwise excluded matter as long as that matter is integrated into a practical application.”

The problem, of course, is that the Supreme Court has determined that that isn’t sufficient.  In Mayo, the Court explicitly said that “one must do more than simply state the law of nature while adding the words ‘apply it.’”  It’s inarguable that in Mayo, the law of nature was integrated into a practical application (determining an optimal dosage).  But the Court held it to be ineligible.

This has been the Supreme Court’s view for quite some time.  Forty years ago, in Parker v. Flook, the Court held that a formula for computing alarm limits in a catalytic conversion process was ineligible as claiming an abstract idea.  Again, inarguably a practical application, but nonetheless ineligible.

Iancu’s proposed guidance gets it wrong because it describes the inquiry backwards.  Iancu said “it does not matter if the ‘integration’ steps are arguably ‘conventional’; as long as the integration is into a practical application, then the 101 analysis is concluded.”  

That’s the opposite of what the Court has held.  Instead, the Court has directed the PTO to decide if the claim was directed to an abstract idea, and if it was, to see if the other aspects of the claim were well-understood, routine, and conventional.  [1][2]

If the PTO shifts to the guidance as described in Iancu’s remarks today, the PTO will be ignoring multiple Supreme Court cases.  And the end result would be a PTO repeating the mistakes of the early 2000s—issuing hundreds of thousands of patents on ineligible subject matter, leading to more court cases and chilling effects on innovation.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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