The USPTO Brings New Guidance to the Section 101 Quandary

Around the time that Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), was working its way up through the federal courts, the U.S. Congress was engaged in sustained legislative debate and activity about the current workings and future direction of the U.S. patent system. See, CRS Report R41638, Patent Reform in the 112th Congress: Innovation Issues, by Wendy H. Schacht and John R. Thomas; CRS Report R40481, Patent Reform in the 111th Congress: Innovation Issues, by Wendy H. Schacht and John R. Thomas; CRS Report RL33996, Patent Reform in the 110th Congress: Innovation Issues, by John R. Thomas and Wendy H. Schacht; and CRS Report RL32996, Patent Reform: Innovation Issues, by John R. Thomas and Wendy H. Schacht. Although the discussion was wide ranging, several points of concern were frequently mentioned. One was the recognition that differences between U.S. patent laws and global patent norms might increase the difficulty of domestic inventors in obtaining rights abroad. Another was the poor patent quality and high costs of litigating patent disputes might encourage speculation, or “trolling,” by entrepreneurs that acquire and enforce patents. These and other concerns led to the enactment of the Leahy-Smith America Invents Act of 2011 (AIA) on Sept. 16, 2011, which was the first major overhaul of the U.S. patent system since the U.S. Patent Act of 1952. While the AIA did not change the language of Section 101, it created several new U.S. Patent and Trademark Office (USPTO) procedures for challenging U.S. patents, including post-grant review (PGR) and a transitional program for covered business method patents (CBM), which are the first agency proceedings to permit challenges to claims based on Section 101.