On November 14th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The structure was unique as there were 33 invited speakers [I was one of them] compressed into 3.75 hours. We each had about 6 minutes to address three PTO representatives, including Robert W. Bahr, Deputy Director for Examination Policy, who has been signing off on the recent memorandums on examination policy. There was a representative from the solicitor’s office and another gentleman whose name was not audible from where I was sitting [seats were assigned based on the order of the presentations, and I was in the bleachers.] The speakers addressed all areas of technology affected by the rise of section 101.
I certainly worried that the program would go way overtime but that did not happen, mostly because the speakers were seasoned, there were no introductions past name and origination, and the PTO representatives asked exactly one question during the presentations. Director Michelle Lee delivered the welcoming comments and then left.
Rather than try to summarize each speaker’s position from my notes, I decided to try to summarize the issues that seemed to have some consensus, or at least were raised multiple times during the presentations. I make no attempt to rank the issues in order of importance.
- Rejections are being made based on an oversimplification of the independent claims. Abstract idea rejections are being based on the mere presence of naked ideas and their practical application is being ignored.
- The rejections do not extend beyond boilerplate and are seldom based on the most relevant case law. Examiners are not supplying reasoned explanations for rejections, but simply citing case law in bulk.
- Section 101 rejections are almost impossible to overcome. Interviews are futile and Examiners appear to lack the authority to withdrawn a 101 rejection once it is made.
- There are as of yet no standards for applicants to establish what activities were conventional or routine in the art when the application was filed. A “crowded art” can help establish lack of preemption but can also make claim elements/steps appear conventional.
- Examiners should be instructed not to make 101 rejections that are supported by non-precedential case law. The PTO should not establish guidelines that extend beyond the case law.
- A 101 rejection should not be made until a complete examination has been made, considering novelty, obviousness and 112 issues.
- Examiners handling applications on diagnostics should be instructed that a “correlation does not always prove causation.” Not all correlations are natural laws. If the people who live in Denver are taller than people who live at sea level, this does not establish that some property of Denver causes residents to be tall.
- More clear and concise guidelines would be helpful, since Examiners tend to attempt to match the facts of the hypothetical examples to the claims they are examining. PTO Memorandums on recent decisions should be issued promptly.
- The current U.S. examination policy does not conform to the standards applied in many non-U.S. jurisdictions, putting our ability to be the innovation leader in jeopardy. Small entities are particularly negatively impacted by the increased delays and prosecution costs.
Well, there are the takeaways I could glean from my notes. I stayed for the entire program and did feel that the Office’s representatives were listening. As a closing note, you may have heard that Andrew Hirschfeld may become the new Commissioner of Patents and Trademarks. Of course, his March 2004 Guidelines launched the SS 101. Let’s hope that whoever gets the job can turn this leaky ship around and get it into a safe harbor.