‘It’ being the nonsensical state of U.S. patent eligibility, that is.  

Over the last decade or so the U.S. Supreme Court has restricted the patentability of numerous inventions as ‘abstract’ or ‘laws of nature,’ including business techniques (Bilski v Kappos), medical inventions (Mayo v Prometheus), biotech inventions (Myriad Genetics), and computer software (Alice v CLS Bank).  Many once-patentable inventions can no longer be protected.  The Supreme Court’s pronouncements have been incorporated into the DNA of the U.S. Patent and Trademark Office and have now begun to infect even mechanical inventions (American Axle v Neapco).

At the request of a bipartisan (!) group of U.S. Senators, the USPTO is requesting information on the effect of the Supreme Court’s throttling of patent rights from a wide range of affected persons, including inventors, patent owners, investors, persons accused of infringement, business organizations, academics, and others.  The USPTO is asking for wide ranging information on how the Supreme Court decisions have affected R&D, employment, procurement, marketing, product development, innovation, competition, and particularly innovation and competition compared to other countries in the world.   The USPTO is specifically asking how the limits on patenting are affecting emerging new industries, such as quantum computing, artificial intelligence, diagnostics, and pharmaceuticals. 

Although a long shot, the information collected by the USPTO may help to build a consensus in Congress about legislation to address the issues created by the Supreme Court.  Of more immediate consequence, the Supreme Court frequently asks for input from the Executive Branch about patent cases before the Court.  The information collected by the USPTO will undoubtedly inform the advice given by the Federal Executive to the Supreme Court.  Like ‘em or hate ‘em, the recent personnel changes at the Supreme Court may provide an opportunity for a fresh look, and, dare we say it, a new direction for the Supreme Court on patentable inventions.

The USPTO is accepting information through September 7, 2021.

*Actor Peter Finch’s Oscar-winning performance in the film ‘Network,’ 1976.

— Robert Yarbrough, Esq.