Patent Eligibility: Hope from the PTO DirectorSeptember 25, 2018

On Monday, September 24th, the Director of the U.S. Patent & Trademark Office, Andrei Iancu, stated in a speech to the Intellectual Property Owners Association that his agency is working on new guidelines that address the “mushed up” and “muddled” case law on patent eligibility under 35 USC 101. Once again, Iancu has acknowledged that the current status of eligibility is unclear and distorted and must end. According to Iancu, there are two problems with the current eligibility analysis: (1) there is no definition of “abstract ideas” which are patent-ineligible; and (2) co-mingling of eligibility under section 101 with other patentability requirements, such as obviousness under section 103. He insists that the standard for eligibility must be clear, so the patent system is predictable and transparent, and people know up front if an invention is eligible for patent protection.

Iancu suggests that in addition to laws of nature and natural phenomena, which are fairly clear and relatively easy to understand, that “abstract ideas” be more clearly defined. For example, he proposes three categories of ineligible ideas based on Supreme Court precedent: (1) mathematical formulas and calculations; (2) methods of organizing human interactions, like fundamental economic practices and marketing/sales activities; and (3) mental processes, such as evaluating and judging. 

He notes that we have gotten ourselves “into a rut” on section 101, and we need simplification. While there are bills pending in Congress, he knows that can take a long time with uncertain results. His concern is that the PTO cannot wait, because there are thousands of examiners “who struggle with these issues on a daily basis.” Iancu concluded that examiners, patent applicants and owners, and the public need guidance now.

Kirk M. Hartung is Chair of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Kirk directly via email at

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