David Kappos, the director of the USPTO under President Obama from 2009 to 2013, recently called for congress to repeal section 101 of the patent act. Broadly his reasoning was three fold:
- The Supreme Court decisions of Mayo, Alice, and Myriad as interpreted by lower courts have made a mess of patent law and threaten protection of key American industries;
- Neither Europe or Asia have 101 and “they seem to be doing just fine in constraining patent eligible subject matter”;
- Section 101 adds nothing to patent law that cannot be better dealt with through applications of the novelty, obviousness, or written description standards.
According to Kappos, the current chaotic “I know it when I see it” 101 test that must be somehow consistently applied by thousands of USPTO examiners and hundreds of judges, means American inventors are better off seeking protection in China and Europe. While America “is providing less protection than other countries”, European countries are “putting their foot down in favor of innovation”.
A Call to Action: Removal of Section 101
In my next couple of blog posts I will be examining this call. First I will be looking at if section 101 should be removed (spoiler – the answer is yes), and in the second I will be looking at what the effect of removing 101 might be.
Removing 101 is a radical action. Such a radical action requires a radical need. The mess the Supreme Court has made of 101 supplies this radical need.
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First, a Little Patent History…
Section 101 of the patent act was added in 1870 and amended in 1952. It states that “Whoever 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.” Discovers and invents – one of the most important things to note – are listed separately. This implies two important things: (1) inventing and discovering are two separate things, and (2) the results of BOTH processes are patentable. The Supreme Court has not, however, interpreted things this way. As early as 1852 in Le Roy v Tatham, the Supreme Court stated, “It is admitted that a principle is not patentable”. A principle was then defined to include such things as electricity or steam power. This was expanded by Funk Brothers when the word “principle” was changed to “phenomena of nature”, and added to electricity or steam were “the properties of metals”. Importantly, Le Roy v. Tatham was decided before the patent act of 1870, when 101 had not existed. No law included discoveries as patentable subject matter. Funk Brothers, however, was decided in 1948 long after the phrase, “inventions and discoveries” was included in the patent law. Still, according to the court “patents cannot issue for the discovery”. The addition of the word, “discovery” to the patent law was glossed over completely by the court. “Aggregation of species fell short of invention”; “The discovery of some handiwork of nature” is not patentable. This would certainly seem to fly directly against the inclusion of both invention and discovery in the American patent law, then and now. It is especially noteworthy that the text of the actual law was mentioned NO WHERE in Funk Brothers. It is certainly arguable that a case that ignores the statutory law and the constitution is a case that shouldn’t be followed. Nevertheless, the following of Funk Brothers has continued. In Diamond v. Diehr, the Supreme Court stated, quoting Diamond v. Chakrabarty, “A new mineral discovered in the earth or plant found in the wild” is not patentable. The law says inventions or discoveries are patentable. The Supreme Court says discoveries are not – and doesn’t even address how this ignores the written law. Rather the court seems to take a philosophical/policy position that works of “God” or “Nature” are unpatentable on its face. Interestingly in the cases have no real discussion of why this should exist. It is simply stated as fact.
This is inappropriate for several reasons. First, as already stated congress, where policy decisions such as this are appropriately made, made a different choice when it added the word discoveries to the patent law. Second, in dealing with the Barbary Pirates Thomas Jefferson was already portraying the United States, correctly, as a secular capitalist nation. Thus, the fact that the item was created by “God”, or “Nature” should be irrelevant. Third, as I mentioned in an earlier blog post, under current law, Nobel Prize winning discoveries are likely unpatentable. This is unacceptable. Discovering a natural product that was unknown before and finding a use for it takes as much creativity, knowledge, and work, if not more, than creating it yourself. The fact that the Nobel Prize winning discovery was made in China – where inventors are better off seeking protection – should be noted.
EnFishing for a Definition of “Abstract Idea”
Besides placing a 101 restriction on things created by “God” or “Nature”, the Supreme Court has placed a restriction on the patenting of abstract ideas, even though it has been completely unable to define what makes an idea abstract. The recent Federal Circuit case Enfish highlights this. In Enfish, the Federal Circuit surprised many by applying the Supreme Courts most recent abstract idea ruling, Alice, to uphold a software patent. Since the patent was held to “improve the function of a computer” rather than simply add “conventional computer components to well-known business practices” the patent was held not to be abstract. How the above relates to making a patent specific as opposed to general, the meaning of abstract, is impossible to fathom.
An obvious, simple, change is already non-patentable under 103. Though law often uses words differently and more precisely than everyday speakers such wholesale disregard for the meaning of a word and the conflation of different parts of a law should not be tolerated. It does though confirm the unworkableness of the standard.
Let’s Make America Bold Again!
Finally 101 should be removed because limiting patentability is not the way to boldly win the future. The countries that innovate will be the countries that win. People will not innovate if no rewards for innovations exist. Weakening the patent system weakens the rewards for innovation when we need to be increasing them and encouraging people to spend the grueling hours in the laboratory or the machine shop it takes to come up with the next big thing. The next Apple or Microsoft being developed in North Korea or China rather than America would be unlikely to have the devastating affects portrayed in Homefront but losing the innovative edge and becoming economically dominated by other countries is how modern countries die. This is why people talk about Singapore, India, and China– but do not talk about the growing power of Canada or France.