Deferring subject matter eligibility doesn’t resolve uncertainty
David J. Kappos, 24 - attorney and former government official who served as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office from 2009 to 2013. Questions for the Record from Senator Tillis, Senate Judiciary Committee, “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System” 1/23, https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_qfr_responses_-_kappos.pdf //DH
2. In response to a March 2021 letter from myself and Senator Cotton, the USPTO launched the “Deferred Subject Matter Eligibility Response Pilot Program,” which invited selected patent applicants to defer consideration of subject–matter eligibility issues until other patentability issues are resolved.
What are your thoughts on deferring consideration of subject–matter eligibility issues during patent examination?
Answer: Deferring consideration of subject matter eligibility questions until after the other patentability hurdles are resolved is a step in the right direction, but falls far short of the complete overhaul Section 101 needs. Deferring eligibility questions helps reduce time spent quibbling with the patent office when there are more fixable issues with the claims, like amending around the prior art, that can be sorted first— and once the other issues are sorted, the claims are less susceptible to 101 rejection. But this does not address the fundamental problem, which is that Section 101 has been judicially expanded into a fuzzy all-encompassing test when it should be no more than a gatekeeper with a very low threshold to exclude only those ideas that are clearly unsuitable for any access to the patent system.