PTO Commissioner Testifies on Need for Patent Eligibility Clarity

Examiners would benefit from more clarity on testing patent eligibility, Patent and Trademark Office Commissioner of Patents Drew Hirshfeld testified Wednesday (see 1909110066). He was responding to a suggestion from Senate Intellectual Property Subcommittee ranking member Chris Coons, D-Del. He and Chairman Thom Tillis, R-N.C., are working on legislation for revising Patent Act sections 101 and 112 (see 1906050076).

One of PTO’s struggles is testing patent eligibility, Hirshfeld said. More clarity would allow examiners to focus on other issues, he said. He said new PTO recommendations went a long way. Before the January document, the agency needed to give examiners more time for review because of extensive Section 101 analysis, he said.

The subcommittee is right to focus on the issue, said Software & Information Industry Association Vice President-Intellectual Property Chris Mohr: “Patent litigation abuse begins with patents that never should have been issued in the first place. It’s critical that PTO issue patents that meet all the statutory criteria, and have an affordable means to correct mistakes when bad patents are issued.”

New case filings are trending upward, Hirshfeld said: FY 2019 new case filings rose 4.9 percent. Filings have increased annually for the past two decades, with the exception of 2009, he added. More examiners are always needed, he said: The agency plans to hire 600 to 700 per year to handle attrition, “plus a little bit extra.”

Tillis said he convened the hearing to figure out how bad patents are getting through the system and what Congress can do to improve the examination process. He and Coons cited the importance of patent filings for the innovation economy.

Hirshfeld highlighted initiatives for ensuring high-quality patents: creating new subject matter eligibility guidance; incorporating public feedback; adjusting examination time and production system to improve quality; updating patent examiner performance appraisal plan; developing an automated patent application docketing system to improve efficiency; enhancing automation tools to create more thorough patentability search; and increasing training opportunities. These are meant for PTO to keep pace with “unprecedented levels of change.” It's expanding artificial intelligence capabilities for search and classifications, he said. PTO is aggregating big data for “teaching points,” he said.

Different types of entities need the patent system in different ways, testified University of Pennsylvania Law School professor Polk Wagner. Some changes that increase burdens on the ability to seek patents can affect smaller companies, individuals and schools, he said. He warned against inadvertently injecting harm.

Section 101 needs adjustment to keep pace with technology, testified Crowell & Moring's Teresa Stanek Rea. She noted it’s become more common to see rejection under Section 101 review.