What is in Bloom This Season??? Section 101 Patent Reform
What types of inventions should be eligible for a patent in the United States?
The question sounds simple enough but unfortunately it has been one of the most contentious and convoluted inquiries in modern domestic patent practice. Some very smart people have yet to agree on the answer, nonetheless, dissention and complexities have not stopped us from trying. New developments are in blossom.
Starting with the Code, 35 USC §101 states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” The federal court system, however, created exceptions to §101 for laws of nature, natural phenomena and abstract ideas. The purpose of the doctrinal exceptions was to ensure that “basic tools of scientific and technological work” were not foreclosed from use by the patent system. See e.g., Gottschalk v. Benson et al., 409 US 63, 67-68 (1972). As technology has evolved the policy driving the exceptions has become blurred and patent practitioners are blindly bickering more and more about eligibility.
Several years ago, the US Supreme Court tried to provide a guiding light by issuing a series of opinions enumerating a modern standard for evaluating claims containing an exception to §101: “First, we determine whether the claims at issue are directed to” a patent-ineligible concept. If so, “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice at 217 (quoting Myriad Genetics). Nonetheless, the Alice standard may have done more harm than good because the standard continues to be unpredictably and erratically applied. See e.g., Berkheimer v. HP, Case No.: 2017-1437 (Fed. Cir. 2018), J. Lourie & J. Newman Concurrence,
I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems. Individual cases, whether heard by this court or the Supreme Court, are imperfect vehicles for enunciating broad principles because they are limited to the facts presented. Section 101 issues certainly require attention beyond the power of the court.
Commentators from as diverse a spectrum as private practitioners, professors, the Patent Office, federal judges and bar associations have opined about the need for change, many offering advantageous suggestions. See e.g., Wayne Sobon, Exploring the Legal Contours of Patent Subject Matter Eligibility, http://www.bilskiblog.com/blog/2016/12/exploring-the-legal-contours-of-patent-subject-matter-eligibility.html (December 15, 2016); Robert Sachs, Twenty-Two Ways Congress Can Save Section 101, http://www.bilskiblog.com/blog/2015/02/twenty-two-ways-congress-can-save-section-101.html (Feb. 12, 2015); Lefstin et al., Final Report of the Berkley Center for Law & Technology Section 101 Workshop: Addressing Patent Eligibility Challenge, Research Paper No. 254, p4 (Oct. 9, 2017); Denise Crouch, Judge Lourie and Newman: Call for Congress to Act, https://patentlyo.com/patent/2018/06/lourie-newman-congress.html (June 1, 2018); U.S. Patent & Trademark Office, Patent Eligible Subject Matter: Report on Views and Recommendations from the Public (July 2017); and Joint AIPLA-IPO Proposal on Patent Eligibility, https://www.aipla.org/policy-advocacy/legislative/joint-aipla-ipo-proposal-on-patent-eligibility (May 2018). I also have my opinions: Patent Eligibility’s Doctrinal Exclusions… Lately, a Scary Movie Too Difficult to Watch – Concrete Solutions and Suggestions, Marquette Intellectual Property Law Review, Volume 22, Issue 2 (2019).
Well, Congress is apparently attempting to answer our calls: on April 17, 2019, the Senate and House Judiciary Committees issued a press release regarding §101 reform: Sens. Tillis and Coons and Reps. Collins, Johnson, and Strivers Release Section 101 Patent Reform Framework. https://www.tillis.senate.gov/2019/4/sens-tillis-and-coons-and-reps-collins-johnson-and-stivers-release-section-101-patent-reform-framework. The bipartisan, bicameral effort to reform Section 101 is the result of the Committees’ recent revival of the Subcommittee on Intellectual Property, “‘Senator Coons and I requested to reinstate the Senate Judiciary Subcommittee on IP because we saw a need to reform our nation’s complicated patent process, starting with section 101,’ said Senator Tillis.” Id.
“‘Today, U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine,’ said Senator Coons. ‘That’s why Senator Tillis and I launched this effort to improve U.S. patent law based on input from those impacted most…’” Id.
The proposed framework for legislative revision is as follows:
Keep existing statutory categories of process, machine, manufacture, or composition of matter, or any useful improvement thereof.
Eliminate, within the eligibility requirement, that any invention or discovery be both “new and useful.” Instead, simply require that the invention meet existing statutory utility requirements.
Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent protection. The sole list of exclusions might include the following categories, for example:
Fundamental scientific principles;
Products that exist solely and exclusively in nature;
Pure mathematical formulas;
Economic or commercial principles;
Mental activities.
Create a “practical application” test to ensure that the statutorily ineligible subject matter is construed narrowly.
Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.
Statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.
Make clear that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.
What are your thoughts… inquiring congressional minds want to know? Id. (“Tillis, Coons, Collins, Johnson, and Strivers are now soliciting feedback on the proposal and encourage stakeholders to email IntellectualProperty@tillis.senate.gov”).
