What do patents and obscenity have in common? While there may be a few that think patents themselves are four-letter words, the correct answer I was seeking was how the Supreme Court seems to view both of these issues. In attempting to define a subjective category like obscenity, Justice Potter Stewart famously explained in Jacobellis v. Ohio that sometimes the court decides it's unwise to go with a strict standard and needs to rely instead on "I know it when I see it." Lower courts were left with the unenviable task of applying this subjective judgment call as a legal standard.


The same kind of confusion exists now as courts grapple with the question, "what is an innovation that can be patented?" For several decades, those who toil in the once obscure field of patent law often answered the question with Chief Justice Warren Burger's famous quote in the Supreme Court decision in Diamond v. Chakrabarty: "[A]nything under the sun that is made by man" is patentable. More recently, the court seems to have adopted that Potter Stewart model, which has unsurprisingly led to decisions that are in tension or direct conflict with one another.

As lower courts have struggled to use this subjective standard objectively, the Supreme Court has had no choice but to weigh in time and time again to try to make its vision clear. It has heard six patent cases in the past year alone. In those cases, it has ruled to limit increasingly more of the inventions that can be patented. Ostensibly, this additional involvement should add clarity to this controversial issue. But even as it attempts to add clarity, the court has expressed its apparent aversion to "bright line" rules (or even commonsense definitions and explanations) in patent cases. As a result, we are left with a lot of conflicting theories and little guidance about how to draft claims and examine them.

The U.S. Patent and Trademark Office (USPTO) is charged with interpreting these decisions and must quickly provide the examiners with the information and tools to conduct a proper examination. After 29 years in the USPTO, I can attest that the court decisions have added more complexity to an already complicated evaluative process.

The recent Alice v. CLS Bank case on patent eligibility is a good example of how the USPTO's actions matter a great deal. On June 25, 2014, the office provided preliminary guidance in view of the Supreme Court decision less than a week after the case was decided. This guidance extended previous guidance issued on March 4, 2014, resulting from another Supreme Court decision on subject matter patentability involving laws of nature and natural phenomena.

In short, the brief Alice guidance provides for a two-part analysis after the claims are determined to be directed to a statutory category. Part One simply charges the examiner to determine whether the claim is drawn to an abstract idea. Part Two then requires the analysis of whether any element, or combination of elements, provides limitations that ensure that the claim is "significantly more" than an abstract idea.

The USPTO heard public comments on the guidance, and is finalizing a revised draft. It seems unlikely, though, that this draft will fully address concerns raised with earlier guidance or how examiners are using the guidance in their evaluations.

In trying to implement the spate of patent eligibility cases emanating from the Supreme Court, it seems the USPTO has gone beyond what was required by the court. Most in the patent community believe that the bar for patentability was set too high by the office. Others think it was set too low. Ultimately, the "significantly more" or "significantly different" tests have been left undefined by the court and are unfamiliar to practitioners, leading to great angst by both the office and applicants as to what they should be understood to mean. There are fears that the guidelines would ban any purified products and questions about the patentability of antibodies expressed from animal cells. And many of the drugs already approved by the Food and Drug Administration (FDA) would not be patentable under these guidelines.

More examples near the boundaries of patentablity would inform reviewers and help assuage some of the concerns. But what the user community really wants is for the office to clearly stay within the confines of the narrow decisions and use the other sections of the patent law more: those dealing with enablement, written description and clarity and obviousness.

The USPTO is to be applauded for listening to the outcry and holding meetings and taking input from the patent community. They have now stated that they expect to issue revised guidelines soon. If they are listening to the complaints, those new instructions will be clear and easy to understand and apply.

The examiners at the USPTO are dedicated public servants trying to get it right. I remain optimistic that the new guidelines will help in the drafting and examination of claims that clearly meet the statutory requirements as interpreted by the courts. By providing clarity that closely adheres to the courts' rulings, the USPTO is ideally situated to offer much-needed consistency and predictability where the courts have failed to provide it. In doing so, the USPTO can help protect America's position as the global leader in emerging technologies that create jobs and promote economic growth.

Stoll is a partner and co-chair of the intellectual property group at Drinker Biddle & Reath and a former commissioner for patents at the United States Patent and Trademark Office.