On January 7, 2019, the United States Patent and Trademark Office issued new 2019 guidelines on how it will go about determining whether an invention is one which the law allows to be patented. If you have been following the news on this topic then you know that since the Supreme Court issued its Alice decision in 2014 businesses that develop software enabled inventions have faced great uncertainty as to whether the subject inventions are patentable. Similarly, businesses that own older patents to such inventions are loath to bring those patents to court on the fear they may be invalidated.
In the words of patent practitioners, an invention which falls in the category of not being patentable is said to constitute “non-patentable subject matter.” The USPTO’s new guidelines outline the process by which the patent office will determine if the invention claimed in a patent application is patentable subject matter. Normally, having an agency issue guidelines explaining how it will apply the law would be a good thing for businesses begging for certainty. However, due to the quagmire that evaluating patentable subject matter has become, the guidelines, though well-intended, do little to simplify the patentability analysis or guide businesses.
Section 101 of the patent law tells us that any of the following inventions are patentable: a process, a machine, a manufactured article or a composition of matter. Read alone, Section 101 seems fairly clear. However, over the past 170 years or so, the Supreme Court has told us that certain types of inventions, though facially allowed by the patent statute, may not be patented. These exemptions fall into three basic categories: laws of nature, natural phenomena, and abstract ideas. Of the three, in recent years the ban on patenting abstract ideas has proven immensely problematic to inventors, companies and patent attorneys – particularly with respect to computer process or software-enabled inventions. In this respect, the courts and the patent office have shown great difficulty in crafting a workable definition that establishes what type of invention is merely an abstract idea that cannot be patented.
Just how complex has the abstract invention analyzing process been? Consider that in 2018 alone, the USPTO issued at least three memoranda discussing the topic and how its patent evaluation process would abide recent judicial pronouncements. Even more revealing of how adjudging whether an invention is impermissibly abstract has become alchemic hair-splitting is the fact that the 2019 “guidelines” are just under 10,000 words long. That’s about forty double-spaced, typed pages of text.
By the way, if you think I am faulting the USPTO for issuing these guidelines – I am not. It is doing the best it can with the nuance-driven cases from the district courts and Federal Circuit that are laboring with the befogged guidance of Supreme Court precedent. Writers have been saying for years that Congress needs to step in and amend Section 101 to provide the needed clarity. However, Congress has shown no interest in doing so. Until then, we have to be satisfied with forty pages of “guidelines,” which I think should be fairly viewed as a cry for help.