A Conversation on Patent Eligibility


Earlier this fall, I had the opportunity to do a webinar conversation with Bob Stoll, former Commissioner for Patents at the USPTO and current partner at Drinker Biddle in Washington, D.C.  Our wide-ranging discussion lasted for just over one hour. You can access the entire recording, free, at Patent Eligibility in a Time of Patent Turmoil.

What follows is a bit of our conversation to whet your appetite.

STOLL: As someone very interested in the patent arena and getting the standards correct, I’ve been really worrying about things. I think we are in a very confusing state at the moment. I think that the courts are actually undermining patent eligibility in many different areas. And the irony seems to be, Gene, that the Supreme Court and now this Court of Appeals for the Federal Circuit seem to be not considering the fact that the United States is leading in many of these emerging technologies and specifically thinking about software and diagnostic methods and personalized medicine and gene sequences….

… [W]hat really needs to happen is there needs to be an education at the Supreme Court, and maybe at the Legislature, as to subject matter. I think there were some technical errors, for example in Myriad where you have an isolated purified DNA segment or full DNA which isolated and purified means bonds are broken. So it’s not something that’s naturally occurring in nature. But you need technical subject matter expertise at the Supreme Court, which I don’t think they have. And you need patent law expertise at the Supreme Court. And you see in Prometheus, where they’re analyzing 101 using 102 and 103. So I think what we need to do is further education of the populace, hopefully reaching the Supreme Court so that they can make more intelligent decisions on some of these very difficult technical issues and legal issues.

* * * * * * * * * *

STOLL: I’d like to ask you, Gene, what effect does this whole troll issue have on these attempts by the Supreme Court to limit subject matter patentability? Do you see any relationship between the publicity of troll efforts to do limitations of patent eligible subject matter by the Supreme Court?

QUINN: I personally do. And that is extremely troubling because if the Supreme Court is taking that into consideration, which I think that they are, they’re then taking into consideration issues that are not in the case in front of them. So we have the worst of all kinds of worlds. One, the Supreme Court is simply not knowledgeable about patent law. And that’s not to say that the Justices couldn’t become knowledgeable, but even in this active state they’re only handling six or eight patent cases a year at most and so a lot of those deal with contracts and that sort of thing. So they’re not ever going to do enough patent cases to develop a specialty.

Two, they’re allergic to bright line rules despite the fact that, in our space, we have 10,000 front-line decisionsmakers between the patent examiners, the Board, the district courts, and the Federal Circuit. You can’t have that many decisionmakers without bright line rules….

Then, the third, they seem really concerned with the politics and policy of these issues whether it’s in health care or whether it’s with gay marriage, or whether it’s with patents. And the politics is not in front of them. They shouldn’t be involved; it’s not the proper role for an appellate court judge on any level.

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STOLL: What about Congress getting involved in patent eligibility issues? I think that— I’m very concerned about it in one mechanism. I know that Senator Schumer was out for expanding covered business methods even before we had the first ten of them decided by the Patent and Trademark Office, and he wanted to make the program permanent when the program itself was there because of a temporary problem. He also wanted to expand it to software and my guess is that there are just people who just don’t like software patents. And I’m very happy that both the House and Senate took that piece out of the bill. But is there an opportunity maybe to have Congress start discussing it? Now, the problem is if they do not move forward with something someone may use that as evidence that Congress didn’t intend this to be patentable subject matter. So I am worried about that idea as well.

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