Patent Office’s Section 101 Guidance Makes a Big Splash While Section 112 Guidance Lies Dormant

Written by: Sunjeev S. Sikand

Patent Act Section 101 is a historically controversial topic in the intellectual property world. Earlier this week, I posted about the large volume of public comment submissions to the Patent Office in response to the Revised Subject Matter Eligibility Guidance on Section 101.

The Electronic Frontier Foundation (EFF) has issued a “Call to Action” and argues that the Revised Subject Matter Eligibility Guidance is “inconsistent with Alice and would lead to a renewed flood of bogus patents.” Thus far, many of the public comments appear to be based on EFF’s “Call to Action” and contain an EFF form paragraph stating: “The USPTO’s role is not to narrow Supreme Court holdings, it is to apply them. Please abandon revisions to the Patent Subject Matter Eligibility Guidance.”

However, an overlooked aspect is that the Patent Office issued Section 112 Guidance pertaining to examining computer-implemented functional claim limitations at the same time as the Revised Subject Matter Eligibility Guidance. The first part of the 112 Guidance covers: (i) invocation of means-plus-function claim interpretation under 35 U.SC § 112(f); and (ii) indefiniteness of claimed functions under 35 U.S.C. § 112(b). The second part of the 112 Guidance covers: (i) written description support of the claimed functions by algorithms under 35 U.S.C. § 112(a); and (ii) enablement of the claimed functions under 35 U.S.C. § 112(a).

As of March 1, 2019, only one public comment has been received in response to the 112 Guidance. Meanwhile 119 public comments have been received in response to the Revised Subject Matter Eligibility Guidance.

While the Revised Subject Matter Eligibility Guidance lowers the Section 101 bar according to EFF, the 112 Guidance appears to counterbalance the Revised Subject Matter Eligibility Guidance with more stringent Section 112 examination. Stakeholders in favor of the steps taken by the Patent Office argue that the overall approach provides greater predictability in patentability of inventions involving computer-implemented functions and ensures that examination of computer-implemented claims will more closely parallel the requirements set forth in 35 U.S.C. § 112.

Whether you agree with the direction the Patent Office is taking or not, the Patent Office and Director Iancu should be commended for taking leadership on these hotly debated issues in light of the evolution of the case law surrounding these statutory sections. For those looking to submit comments on either the Revised Subject Matter Eligibility Guidance or the 112 Guidance, the deadline is March 8, 2019.