LESI | Print Page | Sign In | Join
News & Press: Public Policy Statements

LES Supports New USPTO § 101 Guidance

Friday, March 8, 2019   (1 Comments)
Share |

LES Supports New USPTO § 101 Guidance

The Licensing Executives Society (U.S.A. and Canada), Inc. has submitted comments in support of the USPTO's 2019 Revised Subject Matter Eligibility Guidance.  The comments were included in a letter sent to Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office Andre Iancu.  LES states that the Revised Guidance is a more practical and repeatable approach to patent eligibility assessment, and is entirely consistent with prevailing precedent and traditional approaches. 

On January 7, 2019, the U.S. Patent and Trademark Office ("USPTO") published a Federal Register Notice of its Revised Patent Subject Matter Eligibility Guidance ("Guidance"), and requested public comment.   The Guidance became immediately effective as to all applications, and all patents resulting from applications, filed before, on, or after January 7, 2019. 

Among other things, the Notice cited recent Supreme Court precedent relating to patent eligibility, and acknowledged that the existing framework for assessing eligibility has proven difficult to implement in a consistent manner, and has produced uncertainty.  This uncertainty has made it difficult for inventors, businesses and other stakeholders to predict what constitutes patent eligible subject matter, and to plan and invest accordingly.  The USPTO's Notice further observed that courts are not immune to that uncertainty, and that even our most patent savvy court, the U.S. Court of Appeals for the Federal Circuit, has repeatedly lamented the lack of clarity in this area of law.  To address those concerns, the USPTO has revised its patent eligibility guidance.

In its letter of support, LES stated that the revised Guidance is an appropriate and practical response to the prevailing uncertainty.  According to LES President and Chair of the Board, Bob Held, "This Revised Guidance is an important step forward in securing valuable property rights for American inventors, and will do a great deal to encourage innovation, stimulate economic activity, and serve our public interest."  LES further noted that the Guidance honors the tradition of a broad and inclusive interpretation of patent eligible subject matter while staying true to the prevailing body of precedent, as a whole.  Nonetheless, it is the Society's view that the patchwork of recent Supreme Court precedent, no matter how dutifully applied, is not a proper vehicle for setting national intellectual property policy, especially in the knowledge-based economy of the modern era.  Thus, LES urges Congress to take up the call arising throughout the innovation economy to provide a more potent and policy-oriented approach in the form of legislation. 

LES wishes to acknowledge the contributions of the LES Section 101 ad hoc Committee in compiling comments and preparing the Society's response to the request for comments. 

Click here to see a PDF of the letter.

 

Comments...

Victor Segura, VH Segura Law Firm PLLC says...
Posted Wednesday, June 5, 2019
While the proposed revisions would appear to set clear standards for patent eligibility, the wholesale abrogation of established case law and the addition of new 101(b) are prone to lead to uncertainty, and a likely increase in litigation. Legislation that denotes “The provisions of section 101 shall be construed in favor of eligibility” arguably undermines the job of the courts - interpreting the law based on the facts. -Victor Segura

Sponsors

Connect with more than 500 intellectual capital management decision-makers and thought leaders around the world. Join us at the LES 2019 Annual Meeting as a sponsor to promote your company and discover new business opportunities. Learn more
11130 Sunrise Valley Drive, Suite 350 Reston, VA 20191 Phone: 703-234-4058 Fax: 703-435-4390