Huping Hu, et al. v. Drew Hirshfeld, Acting Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office

The patent claims in Petitioners’ four patent applications are based on their experimental discoveries related to quantum entanglement while conducting brain research. These discoveries were published in peer-reviewed scientific journals. However, the patent claims were all rejected by the PTO and the said rejections were then affirmed by the Federal Circuit under 35 U.S.C. § 101 on the grounds of operability by applying a “heightened standard” not found in the statutes nor any case decided by this Court, and judicial exception of natural phenomenon in one application. Indeed, this Court had scarcely considered the fundamental threshold question of operability under § 101 since the Patent Act of 1790. The Board stated that “[w]e have no doubt that if [Hu]’s invention is able to use quantum entanglement to ... it would be both groundbreaking and revolutionary” (App. 34a). Citing Hamlet by Shakespeare in a footnote, the Federal Circuit stated that “(slhould further investigation bring peer recognition and verifiable results, the PTO ... would surely be interested” (App. 24a). The questions presented are’ 1. Whether the PTO’s varied standards, buttressed by the decisional law of the lower reviewing courts, for determining operability under § 101 are biased towards conventional inventions but against groundbreaking inventions or discoveries, thus hindering the promotion of the “Progress of Science and Useful Arts” emanating from the Intellectual Property Clause of the U.S. Constitution.