AIPLA Submits Comments to USPTO Regarding Request for Information to Assist Preparation of Patent Eligibility Jurisprudence Study October 15, 2021

On October 15, 2021, AIPLA submitted a comment letter to the United States Patent & Trademark Office (USPTO) following the Office’s request for information to assist in preparation of the Patent Eligibility Jurisprudence Study. In its comments, AIPLA addressed how the current state of patent eligibility jurisprudence in the U.S. affects patent protection in this country as compared to other jurisdictions (including instances of denial of patent protection in the U.S.), its impact on business strategies, the U.S. economy and the public as a whole.

In the letter, AIPLA expressed that the current state of patent eligibility jurisprudence has had a negative impact on the predictability and reliability of patent protection, particularly in the life sciences and software industries, and on the ability to obtain patent protection needed to incentivize the development of new technologies. These setbacks in the U.S. patent system have also been noticed by those who finance companies focused on such technological innovations, making it difficult to receive financing for cutting-edge technologies.

The letter noted that the uncertainty created by the current state of patent eligibility jurisprudence permeates patent prosecution and procurement strategies, portfolio management, and patent counselling and enforcement. By contrast, it noted that AIPLA members observe that compliance with subject-matter eligibility requirements in other jurisdictions is more predictable because the requirements are clearer and more consistently applied in examination and enforcement.

The letter noted that the current uncertainty in the United States associated with patent protection available to certain inventions has increased costs of patent prosecution, discouraged disclosure of certain inventions in patent applications (in favor of trade secret protection), increased uncertainty regarding enforcement and discouraged licensing of various technologies. AIPLA explained that, as a result, the current state of patent eligibility jurisprudence adversely affects the public by decreasing incentives to invest in the development of products that will improve individuals’ quality of life and the public health. It was further noted that the uncertainty around Section 101 law and its application to innovations of artificial intelligence also threatens to undermine our national security.