By Donald Zuhn —
On Monday, Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter to Drew Hirshfeld, the Commissioner for Patents at the U.S. Patent and Trademark Office, to propose that the USPTO conduct a pilot program on a sequenced approach to patent examination. In their letter, Sen. Tillis (at right), the Ranking Member of the Senate Subcommittee on Intellectual Property, and Sen. Cotton (at left), a member of the Subcommittee on Intellectual Property, suggest that a sequenced approach to patent examination, in which applications are first examined for compliance with 35 U.S.C. §§ 102, 103, and 112, and then for compliance with 35 U.S.C. § 101, could "avoid unnecessary and inefficient rejections on grounds of patent eligibility."
The Senators express their concern that "by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101." While stating that examination under §§ 102, 103, and 112 is based on "well-developed and objective criteria under the law," the Senators assert that "current patent eligibility jurisprudence lacks the clarity, consistency, and objectiveness the other grounds of patentability possess." They argue that:
By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.
In view of discussions they have had with USPTO officials, the Senators note that by using a sequenced examination approach, Applicants "rarely receive[] a rejection on grounds of patent eligibility," because "by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well."
The Senators provide three reasons why a sequenced approach to examination may improve the examination process. First, they argue that a sequenced approach would "focus[] initial examination on the objective areas of patentability as opposed to the abstract, vague, and subjective questions of eligibility, leaving eligibility examination to a point in the process where it can be conducted much more effectively." Second, a sequenced approach would "improve[] efficiency by avoiding the waste of valuable examination and applicant time on vague questions of patent eligibility as a threshold matter." And finally, the Senators argue that a sequenced approach would "lead[] to stronger, more reliable, and higher quality patents by focusing first on the more rigorous and easy to identify standards of patentability."
The Senators conclude their letter by requesting that the Commissioner initiate a pilot program to determine whether a sequenced approach would be more effective and produce higher quality patents than the traditional compact examination approach. They also ask the Commissioner to let them know by April 20, 2021 whether such a program will be implemented, and if the USPTO elects not to implement such a program, "provide us with a detailed explanation of why you will not conduct the requested pilot program."
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