Reforming Subject-Matter Eligibility at the USPTO: A Proposed Specialized Examination Unit for 35 U.S.C. § 101 - Lets Call It "The PTAB"

Abstract

With the appointment of John Squires, former Intellectual Property Counsel of Goldman Sachs, as Director of the United States Patent and Trademark Office ("USPTO"), the agency stands at a pivotal moment in the ongoing struggle over the scope of patent-eligible subject matter under 35 U.S.C. § 101. Squires-together with USPTO leadership figures such as Howard Lutnick, an inventor on hundreds of business method patents-enters office at a time when innovation in fields such as artificial intelligence, financial technology, blockchain, Web3, and algorithmically mediated medical diagnostics is increasingly constrained by the uncertain and often inconsistently applied jurisprudence stemming from Alice, Mayo, and their progeny. Early administrative signals during Director Squires's tenure indicate an institutional willingness to reconsider entrenched approaches to § 101 examination. This Article proposes the most significant institutional reform to § 101 examination in decades: the creation of a dedicated, legally trained § 101 Examination Unit-composed of attorneys, former administrative patent judges ("APJs"), or examiners with substantial legal education-to assume responsibility for subject-matter eligibility determinations after traditional art-unit examination concludes. Operating as a quasi-intermediate appellate body and building on historical "Super Examiner" roles, this unit would absorb § 101 examination from the technologically oriented art units, enhance patent quality, reduce PTAB appeals, and provide a consistent, legally grounded framework aligned with administrative-law principles, precedent, and the realities of modern innovation. An alternative approach is to simply assign all 35 U.S.C. 101 rejections to the PTAB, due to APJs having the ideal legal background to handle and analyze all 101 rejections.