The CP is the status quo – it improved certainty somewhat, but the PTO can’t stop judicial uncertainty

The USPTO examines approximately 650,000 patent applications a year. Therefore, it is imperative for the Office to have predictable and consistent analytical frameworks for examination. The state of Section 101 jurisprudence created much confusion, consternation and unpredictability in examination. As a result, the USPTO has tried to alleviate this problem to the extent possible. For example, in 2019, the USPTO issued the Revised Patent Subject Matter Eligibility Guidance that synthesized the caselaw and clarified what types of inventions courts have excluded from Section 101 under the Supreme Court’s Mayo/Alice framework.38 Among other things, the guidance clarified that ineligible “abstract ideas” under the Supreme Court’s precedent can be grouped as mathematical concepts, certain methods of organizing human activity, and mental processes. The guidance also explained that a patent claim that contains an element from an excluded category does not destroy patentability if the claim, as a whole, integrates that element into a practical application.

This guidance has been a tremendous success. As the USPTO Chief Economist explained, the 2019 guidance “caused a further, and much larger, decrease in the percentage of first office action Section 101 rejections” than previous USPTO efforts.39 Indeed, the likelihood of “receiving a first office action with a rejection for patent-ineligible subject matter . . . decreased by 25%.”40 Further, “[u]ncertainty in patent examination for [] affected technologies decreased by 44% in the 12 months following the issuance” of the guidance.41 This helped reverse the 31% increase in the likelihood of receiving a rejection and the 26% increase in uncertainty that followed the Supreme Court’s decision in Alice. Simply put, the data showed that this guidance had a positive impact on Section 101 analysis at the USPTO, to the public’s benefit. Since then, much of these materials has been adopted in the USPTO’s Manual of Patent Examination Procedure.42

While proceedings at the USPTO on Section 101 are therefore more predictable at this time, none of this changes the judicial approach in court, where confusion remains. This is because the USPTO’s examination system and post-grant proceedings at the Patent Trial and Appeal Board are separate from the courts. The USPTO cannot take the lead on fixing the state of Section 101 jurisprudence because Congress has the constitutional mandate to craft patent law, which the administration and courts must follow. I think we can all agree that an all-encompassing discovery of nature, such as Isaac Newton’s discovery of gravity, should not be patentable. But the point is that Congress should decide what should be patentable, and any exceptions to patentability should likewise be debated and clearly defined by Congress.