PTO can’t create legal certainty. It has no rulemaking authority and is bound to follow the courts

The U.S. Patent & Trademark Office Pilot Program on deferred patent eligibility consideration (“pilot program”) is one possible response to the indeterminacy and restrictive scope of patent eligibility created by the Supreme Court in its Mayo-Alice inquiry, but the pilot program is neither a preferred nor complete solution. This is the case for at least several reasons.

First, in questions of law like the Mayo-Alice inquiry, courts are not required to follow the USPTO’s guidelines or decisions resulting therefrom; in fact, the Court of Appeals for the Federal Circuit has explicitly rejected arguments by patent owners that it should defer to the patent-eligibility rules created by the USPTO, stating “we are not bound by [the USPTO’s] guidance.”5 Thus, when the USPTO grants a patent under the deferred program, district courts and the Federal Circuit will continue to apply de novo the patent-eligibility requirement in § 101, as construed by the Supreme Court in the Mayo-Alice inquiry.

Second, and related to the first reason, the pilot program is only a procedural response within the substantive doctrine set forth by the Supreme Court in the Mayo-Alice inquiry, and thus the pilot program does not address the legal deficiencies created by Mayo-Alice inquiry. The USPTO has no substantive rulemaking authority in its examination of patent applications, and thus it must follow the doctrines created by the Supreme Court in its interpretation of the patent statutes or in its continuing application of longstanding common law doctrines in the patent system, such as, among others, the exclusionary rules for patent eligibility, patent exhaustion, and the doctrine of equivalents.6 Thus, USPTO guidelines and other examination practices cannot ultimately resolve the fundamental problems in law and economic policy created by the indeterminacy and cramped eligibility requirements of the Mayo-Alice inquiry.