Opinion

The Next Unknown in Intellectual Property: President Trump

By Timothy Molino
November 14, 2016 at 5:00 am ET

The U.S. Patent and Trademark Office’s decision to host a series of roundtables on subject matter eligibility issues starting today and extending into next month comes at a uniquely interesting time. For one, no one really knows the Trump administration’s vision or plans for intellectual property. This uncertainty casts a shadow over what’s already been a particularly disruptive period in IP.

The post-Supreme Court Mayo-Alice landscape casts into question what is and what is not a patentable invention. The district courts, federal circuit, PTO, litigants and inventors all have been struggling to make sense of these opinions and their progeny ever since. Central to the confusion is the Supreme Court’s “test” that guides the application of Section 101—the gatekeeping provision that defines what subject matter is eligible for patent protection.

In the first year and a half after Alice, there were eleven federal circuit decisions striking down/invalidating computer-related patents and only one – DDR Holdings – upholding the patent. The results were even worse in district courts with countless decisions invalidating patents, often based on inconsistent analyses. In the last six months, however, we’ve seen a new bullishness from the federal circuit in handing down reversal after reversal of district court decisions that had invalidated software patents under Sec. 101. Key cases like Enfish and Planet Blue have resolutely confirmed software patent eligibility.

Even with recent favorable momentum from the federal circuit for patent owners, advocates for legislative reform of Section 101 are growing more vocal. Inventors are becoming more and more frustrated by the slow pace and inconsistency of court decisions and would prefer a fresh slate. The question of whether Congress should attempt to override the Supreme Court’s recent case law on patent eligibility will be surely be one of the more significant topics discussed at the roundtables. While the hope that Congress would move swiftly to provide greater clarity is understandable, it’s also unrealistic. The efforts of the federal circuit to clarify the Alice test are slow and frustrating, but it far and away beats any progress we can point to on patent reform legislation from a Congress that is thoroughly divided on the issue. In fact, many stakeholders have taken a wait-and-see approach, opting to rely on incremental improvements by the courts, rather than risk an ugly (and very public) food-fight in the legislature.

Of course, Trump’s presidency and Republicans maintaining majorities in both chambers of Congress stirs the pot even more. The new political structure in Washington will undoubtedly inject another element of uncertainty and inconsistency. For now, we’re left with open-ended questions answered by open speculation. Given Trump’s interest in trade and competition concerns with China, would this mean a more aggressive posture on patent eligibility within the U.S. IP system to protect America’s inventors? Or would this lead to a clash that he doesn’t want to have? Does the Trump appointee to the Supreme Court mean an IP friendly judge? Once the empty seat is filled, will the Supreme Court continue to prioritize patent cases like it has in recent years?

In the face of these looming questions and directional uncertainty from a new administration and Congress and slow progress from the courts, the best use of the upcoming PTO roundtables could be to examine consistency and confusion within its own ranks. Administrations last only four or eight years, but patent examiners can last much longer. It makes sense for the PTO to hear an honest assessment of the Section 101 Guidelines themselves and their application from stakeholders.

The PTO has made significant efforts to address the challenges of inconsistent application of Mayo and Alice, but the unpredictability of outcomes remains one of the biggest concerns voiced by stakeholders. Today, many patent applicants feel like they are “rolling the dice” as to which patent examiner gets assigned to review their patent application, which can have a dire impact on business planning and innovation at large. This should not be how the law works, especially when it could mean that the next breakthrough drug is not developed or the next computer-related innovation is never brought to market.

Perhaps no one knows better than USPTO the difficulty in making sense of the contradictory opinions handed down from the courts. In general, the courts have not done a great job of providing clear or consistent guidance to the public, but, for the most part, the PTO’s guidelines are solid interpretations of the caselaw. Most complaints that I hear from stakeholders on the guidelines do not relate to the guidelines themselves, but instead, are more about how individual patent examiners are applying them. The PTO should seek to develop policies that enable their own guidelines to be applied consistently. In order to achieve the goals of clarity, consistency, and fostering innovation, there is no question that improvements still need to be made. I’m hopeful that the PTO’s efforts today and under the new administration are a positive step toward these goals.

 

Timothy Molino is a consultant at Peck Madigan Jones. He started his career as a patent litigator. More recently, he was Sen. Amy Klobuchar’s (D-Minn.) chief counsel and worked on IP policy issues for BSA | The Software Alliance.

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