Public Interest Patent Law Institute and American Civil Liberties Union Call on PTO to Protect Rigorous Subject Matter Eligibility Review

On March 7, 2022, the Cyberlaw Clinic submitted a Comment on behalf of the Public Interest Patent Law Institute (PIPLI) and the American Civil Liberties Union (ACLU). The PIPLI and ACLU DSMER Comment responded to a United States Patent and Trademark Office (USPTO) Notice announcing a pilot program to evaluate the effects of permitting applicants to defer responding to subject matter eligibility (SME) rejections in certain patent applications. The Cyberlaw Clinic was pleased to have the opportunity to collaborate with Alex Moss, Executive Director of PIPLI, and Sandra Park of the American Civil Liberties Union on the Comment.

Patent eligibility requirements are a foundational component of the patent system. The Constitution mandates that the patent system “promote the progress of science and the useful arts.” The Supreme Court has long held that this provision makes laws of nature, natural phenomena, and abstract ideas ineligible for patent protection. The important social impact of eligibility jurisprudence has been particularly salient during the COVID-19 crisis because of its role in promoting the rapid development, commercialization, and increased accuracy of COVID-19 diagnostic tests.

As the Comment explains, the rationale for the program is not supported by empirical evidence. By relying on an incorrect premise, the USPTO risks imposing the opposite effect of the program’s stated purpose. Rigorous examination of eligibility is vital to patent quality and clarity. Conducting this examination early in the application process ensures that it remains unbiased by assumptions that examiners will otherwise be required to make. Early eligibility determinations may also improve examination efficiency by clarifying the scope of more fact-intensive and time-consuming parts of the examination process. Delaying eligibility determinations risks negative impacts on patent quality, patent clarity, and the efficiency of patent examination.

Additionally, as made clear in the Comment, experimental design issues and the lack of publicly available information about how the USPTO plans to evaluate the results of the pilot program raise concerns that a permanent policy change will be implemented without adequate justification.

In light of the strong public interest in rigorous subject matter eligibility evaluation and the risks presented by deferral, the ACLU and PIPLI urge the USPTO not to extend the pilot program or enact permanent changes until the public has meaningful opportunity to evaluate and comment on its effects.

Alongside Alex Moss, the Comment was authored by Spring 2022 Cyberlaw Clinic students Cosmas Robless (JD ‘23) and Mariah Bellamoroso (JD ‘23), who worked closely with Harvard Law School Clinical Instructor Kendra Albert.