Recently, several members of Congress have reinstituted the
Subcommittee on Intellectual Property in the U.S. Senate. This, in and of itself, is relatively big
news. We can expect a good amount of
proposed legislation moving out of this subcommittee concerning intellectual
property in the near future.
The first
document to issue from the subcommittee (and includes support from members of the
House of Representatives as well as the Senate) is essentially a framework for
Section 101 patent eligible subject matter reform. Patent eligible subject matter has been a
controversial topic in the United States for years, and attempts to cabin the U.S.
Supreme Court Alice v. CLS Bank/Mayo v. Prometheus decisions by the United States
Patent and Trademark Office and some judges of the U.S. Court of Appeals for
the Federal Circuit has led to a relatively messy and some may argue
contradictory set of guidelines, rules and precedent.
This may be unhelpful to promote investment and innovation.
A Press Release from Senator Christopher Coons from Delaware
sets forth the outline of the framework:
·
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.
While this list appears to serve as a list of the broad
strokes of the new legislation, it clearly appears to roll back the Alice/Mayo
test. Some of the parts of the framework
appear to be concessions to some groups who might be opposed to broad subject
matter eligibility, such as some technology companies. For an IP legislative wish list by the AIPLA, please see, here. A
Congressional Research Service report on patent eligibility reform by Professor
Jay Thomas is available, here. The CRS
report predates some of the more recent U.S. Court of Appeals for the Federal
Circuit and USPTO decisions concerning eligibility, and includes a discussion of patent eligibility reform proposals from major IP trade associations. If patent eligibility legislation is passed
along the lines of the framework, it nicely sets up the question of how we should
reform nonboviousness law, which will have increased importance as the major
policy lever policing patentability.
Here are some of the statements of Congressmen supporting
patent eligibility reform:
“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. I am grateful for the engagement
of all stakeholders participating in our roundtables, as well as the bipartisan
and collaborative efforts of colleagues in both the Senate and the House. I
look forward to continuing to receive feedback as we craft a legislative
solution that encourages innovation.”
“Senator Coons and I requested to re-instate 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. “The release of this framework comes after multiple
roundtables and extensive discussions with stakeholders who would be affected
by reforming Section 101. Senator Coons and I look forward to receiving
feedback from the release of this framework and encourage anyone who might
potentially be affected to contact our office and offer us input.”
“Upgrading the patent eligibility test is critical if
we want American innovation to continue to lead worldwide,” said Rep.
Collins. “Encouraging innovation in Georgia and throughout our country
means restoring confidence for inventors and investors that their patent rights
will be upheld in court.”
“I’m pleased to participate in this important and relevant
roundtable. Many have voiced concerns about uncertainties in in this area of
patent law jurisprudence, and I’m interested in hearing from all stakeholders
as we continue to work towards a consensus solution,” said Congressman
Hank Johnson, who serves as Chairman of the Judiciary Subcommittee on Courts,
IP and the Internet. “I particularly look forward to—and
welcome—feedback on the outline proposal we’re considering here today.”
“In my home state of Ohio, leaders in the fields of biologics
research and diagnostics will deliver the cures of tomorrow. This is only
possible if we can protect those innovations with the patent protection that
rewards the risks and investment necessary to discover the next great
idea,” said Rep. Stivers. “We have the opportunity to advance our society
in so many exciting and unknown ways, and we need to ensure we have a patent
system that encourages that kind of game-changing innovation, instead of
stifling it.”
