USPTO report on views and recommendations from the public
By Ferraiuoli LLC

On October 17, 2016, the USPTO issued a Federal Register Notice seeking public input on patent eligible subject matter in the wake of recent decisions by the Supreme Court. In the Notice, the USPTO announced the convening of a roundtable on the current state of the law of patent eligibility: "Exploring the Legal Contours of Patent Eligible Subject Matter". Held on December 5, 2016, at Stanford University, it consisted of seven interactive panels with over 250 participants including industry, private practice, academia, associations, inventors, and small businesses.
The conclusions of the roundtable are the subject of the report, which among other things states that members of the public "generally agreed that the Supreme Court’s recent jurisprudence altered the landscape of patent eligibility law".
Some commentators "supported the Court’s decisions and subsequent lower court case law developments, viewing them as simply the common law process at work", arguing for example that the new Mayo/Alice eligibility test gives them a useful tool to defend against abusive lawsuits by patent assertion entities. On the other hand, others opposed to the Court’s recent decisions affirming the are "legally flawed and that the judicially-created exceptions to eligibility are too broad". Detractors also asserted that the two-step test is "difficult to apply" and that the Court’s jurisprudence "stifles innovation, hurts businesses, and harms American competitiveness".
Beyond their favorable or negative opinions, nearly all the public recommended a legislative change, with varying approaches. "Some suggested replacing the Mayo/Alice two-step test with a technological or useful arts test or expressly defining exceptions to eligibility. Others suggested clearly separating eligibility from other patentability requirements.
