The
United States Patent and Trademark Office (USPTO) today published a
report authored by its Chief Economist titled, Adjusting to Alice: USPTO
patent examination outcomes after Alice Corp v. CLS Bank International.
The report highlights how recent actions undertaken by the USPTO have
brought greater predictability and certainty to the determination of
patent eligibility in the technology areas most affected by the
decision.
“We
have heard anecdotally from both examiners and applicants across the
entire spectrum of technologies that our 2019 guidance on Section 101
greatly improved the analysis in this important area of patent law,”
said Andrei Iancu, Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office. “The
Chief Economist’s report now confirms this general perception,
especially with its critical finding that uncertainty decreased by a
remarkable 44%.”
The
report’s analysis by the USPTO’s Office of the Chief Economist found
that one year after the USPTO issued its January 2019 Revised Patent
Subject Matter Eligibility Guidance (2019 PEG), the likelihood of
Alice-affected technologies receiving a first office action with a
rejection for patent-ineligible subject matter had decreased by 25%.
Likewise, uncertainty about determinations of patent subject matter
eligibility in the first action stage of patent examination for the
relevant technologies decreased by 44% over the first year following
publication of the 2019 PEG compared to the previous year.
“The
primary economic function of the patent system is to provide an
incentive for greater innovation,” according to Dr. Andrew Toole, Chief
Economist of the United States Patent and Trademark Office and principal
author of the report. “Using an evidence-based approach, our report
highlights the significant impact of the Supreme Court’s Alice decision
on patent examination outcomes and the important stabilizing role played
by the USPTO. This is what innovators and investors need to confidently
promote entrepreneurship, create jobs, and advance science and
technology.”
Director
Iancu added, “I have long said that in order to ensure that the United
States remains the global leader in the technologies of the future, our
patent system must move beyond the recent years of confusion and
unpredictability on subject matter eligibility. It is now clear that our
recent guidelines mark a significant step in that direction, and I ask
all involved in our treasured patent system to come together and solve,
once and for all, this fundamental issue.”