IPO adopts resolution supporting legislation to amend 35 U.S.C. § 101

By Gene Quinn
January 31, 2017

Gavel with sectionIn a meeting on Sunday, January 29, 2017, in Orlando, Florida, the Board of Directors of the Intellectual Property Owners Association (IPO) adopted a resolution supporting legislation to amend 35 U.S.C. § 101, in order to address the uncertainty created as a result of the difficult to apply Alice/Mayo framework created by the United States Supreme Court.

The IPO recommends a legislative solution that would both amend the current language of § 101, and which would add two new subsections to § 101. A marked-up version of the IPO proposed § 101 follows, with added text underlined in red and removed text shown struck-through in blue.

101(a) ELIGIBLE SUBJECT MATTER

Whoever invents or discovers, and claims as an invention, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto, may obtain shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements of set forth in this Title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY

A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

In a statement announcing the proposed statutory language, IPO explained:

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.

This IPO proposed language is obviously an attempt to overrule the Supreme Court’s decision in Mayo v. Prometheus, which is at the very heart of all of the recent patent eligibility mischief. In Mayo, the Supreme Court ignored Diamond v. Diehr, which forbade interjecting questions of novelty into the patent eligibility determination under § 101. Simply stated, the Mayo Court intentionally conflated § 101 with § 102, § 103 and § 112.

After Mayo, decision-makers on all levels, whether patent examiners, Administrative Patent Judges, district court judges, or Federal Circuit judges are tasked with considering whether a claim directed to a judicial exception (i.e., abstract idea, law of nature, or natural phenomenon) adds only conventional items or steps, or whether it adds significantly more. This inquiry is a novelty inquiry that is taking place under § 101 without the application of any prior art, which means the § 101 test adopted by the Supreme Court is purely subjective.

Clearly, the IPO language is an attempt to significantly curtail the so-called judicial exceptions to patentability, created by the Supreme Court despite the fact that there is no authority or power for the Court to have done that which can be found anywhere in the statute. It is worth noting that the sole exception to patent eligibility is a very narrow reading of the law of nature exception, and that the IPO language would do away with the abstract idea exception. Doing away with the abstract idea exception is much needed given: (1) no courts, including the Supreme Court who gave us the exception, have ever defined the term “abstract idea”; and (2) every invention must necessarily start with an idea.

Several important questions remain. First, is there any appetite in Congress to take up § 101 reforms? Second, if a proposal like this were to be introduced we can anticipate that those who have made a cottage industry out of engaging in efficient infringement will submit a contrary and directly opposite legislative reform proposal. Thus, the critical threshold question to answer is whether there is a strong likelihood of achieving success, because if there is not then a proposal like this could ultimately lead to greater harm. Third, will the Supreme Court care what Congress does and actually start to follow the statute? Remember, the statute and precedent were already clear. There is no support for any judicial exceptions to patent eligibility anywhere, and the Supreme Court intentionally refused to allow the other sections of the statute to do the work for which they were designed, thereby overruling Diamond v. Diehr.

I do think the time is now to take action on a legislative fix to § 101, and I think there is enough of an appetite in the industry to fix the purely subjective, arbitrary and capricious § 101 test being used today. I know there is at least some appetite by certain Members of Congress in both the House and Senate to take action, so I do think a reform like this has a chance. I also think the forces pushing for a fix will be in a better position now that President Obama is no longer in the White House and Google doesn’t have quite the grip on government that they enjoyed over the last 8 years. As far as whether the Supreme Court will actually follow the law, I have my doubts. Still, rather than sit back and watch the Supreme Court destroy American innovation, as they seem to be attempting to do, we need to try something and then just hope that they eventually start to follow the law.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 25 Comments comments.

  1. fdsfffffffffffffffsssf January 31, 2017 12:57 pm

    A process comprising waking up in the morning, going to work, eating lunch approximately halfway through the work period, and returning home at the end of the work period… wouldnt exist prior to human activity. patent eligible subject matter, right?

  2. Gene Quinn January 31, 2017 1:20 pm

    fdsfffffffffffffffsssf-

    Why do you think any process shouldn’t be patent eligible?

    You do realize there are 4 other requirements to be able to obtain a patent, and the rather ignorant example you gave would be weeded out properly under Section 102. So why the need to do it under 101, which was never intended to be used in such a manner?

    Seriously, if all you can do is offer stupid, ignorant and uninformed commentary please keep your thoughts to yourself or go elsewhere. Your brand of ignorance is celebrated in many corners of the Internet.

  3. Inventor January 31, 2017 2:19 pm

    Gene,
    Good stuff. Head and shoulders over SCOTUS’s Alice decision, for example.
    Makes 101, 102, 103 orthogonal…..non-overlapping….easy to understand…easy to decide…..a good idea.
    I also like the fact that one does not need to make a generic computer work better in order to be eligible, as per Thomas.
    Finally it eliminates the need to guess what the difference between an “abstract idea” and a regular idea is.

  4. Inventor January 31, 2017 2:25 pm

    ….one troubling thought….forgive my senior moment, but…

    Can it be argued that an algorithm exists only in the human mind?
    If so, then how to differentiate between an algorithm and a method….does a method somehow exist outside the human mind while an algorithm does not?
    If an algorithm is encoded only in software (even if it could also be committed to hardware) does that mean it exists only in the human mind?

  5. ac January 31, 2017 3:32 pm

    Until recently, one would have hoped that 101(c) would have been superfluous. Thanks to Scotus, however, it appears as if it is necessary.

  6. Gene Quinn January 31, 2017 3:37 pm

    Inventor-

    Yes, there is a lot to like here. Remember though, if the current Supreme Court had not overruled Diehr much of this wouldn’t be necessary. The 1981 Supreme Court explained that it was an error to incorporate novelty into 101 despite the word “new” being in the statute.

    This IPO effort is impressive, well thought out, and has been thoroughly debated. Hopefully it will really jump start a much needed pro-patent reform discussion.

    -Gene

  7. Curious January 31, 2017 4:27 pm

    Can it be argued that an algorithm exists only in the human mind?
    Look at the proposed language — “if and only if the claimed invention as a whole … exists solely in the human mind.” If all you are claim is the algorithm, and it could be practiced, solely in the human mind, then non-statutory. However, if the claimed invention AS A WHOLE (i.e., based upon all of the limitations) cannot be performed in the human mind, then no exception.

    I would also liked to have seen 35 USC 101 to clarify that 35 USC 101 is not a “condition for patentability” pursuant to 35 USC 282. In essence, it is up to the USPTO to determine whether something meets 35 USC 101. However, once patented, 35 USC 101 cannot be used a defense.

  8. Curious January 31, 2017 4:28 pm

    BTW — the tea leaves are saying Neil Gorsuch is going to be the Supreme Court nominee. I cannot find anything about him with regard to patents or property rights. However, I did read that he believes that statutes should be literally interpreted — something SCOTUS has NOT done with 35 USC 101.

  9. Anon2 January 31, 2017 5:35 pm

    I like the intention…

    Can someone explain the following:

    Section 101(a) entitled “ELIGIBLE SUBJECT MATTER” presumably serves as a definition of what is or is not eligible? it contains language saying it is “subject to” exceptions, conditions, requirements”. Does this not imply that to be “eligible” it must satisfy 102, 103, etc.?

    Section 101(c) says “eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112”

    Is this a little contradictory? Could someone explain how, without importing any meaning from outside this statutory provision, this is not … a little confusing?

  10. Gene Quinn January 31, 2017 6:27 pm

    Anon2-

    The “exceptions” listed in the last line of 101(a) would be 101(b).

    The “conditions and requirements” language in the last line of 101(a) is the same as current 101, and means only that you still need to satisfy 102, 103 and 112 to actually get a patent. So you shall be entitled to a patent subject to the exceptions (101(b)) and the conditions and requirements (102, 103, 112).

    So if you claim a useful process, machine, manufacture, or composition of matter, or a useful improvement thereto, you get a patent as long as the 101(b) exception doesn’t apply and the claim/invention is adequately described, the claim is novel and nonobvious. There is no contradiction at all.

  11. Anon January 31, 2017 9:33 pm

    Bravo.

  12. Inventor January 31, 2017 9:39 pm

    Curious@7 (re: Inventor@4),

    Thanks for the clarification. That helps.

    If I follow then “existence in” implies “practicable in” the human mind.
    ….and we are talking about “the claimed invention as a whole”
    ….and “as understood by a person having ordinary skill in the art”.

    Is it reasonable to further assume that the human mind we’re considering is that of THE person having ordinary skill in the art and not that of a genius and/or savant of some sort?
    True?

  13. You Know Who I Am January 31, 2017 9:40 pm

    If the judicial exceptions are seen expressions of judicial equitable discretion, Congress may not be able to get to them at all.

    This paper make an interesting case for that proposition for the Executive; the reasoning could just as well apply to the Judiciary in our combined system of equity and law.

    This is, at heart, a political problem that likely requires a compromise solution that does not destroy in full the interests of either side of the debate.

    You know who I am, and you know what I want…..

  14. You Know Who I Am January 31, 2017 9:40 pm

    The link

    http://repository.law.umich.edu/cgi/viewcontent.cgi?article=1310&context=mlr

  15. Colonial Cousin February 1, 2017 5:23 am

    I’ve found that using the bark of the Redwood tree is an effective treatment for several serious illnesses. However, under this dicta since it exists in the natural world then I cant have a patent for it.

    Be careful what you wish for – eligibility criteria apply to all inventions not just the computer based stuff.

    As to mental acts – good luck with that one. Its been a problem in the UK for a long time and has only just been resolved. Mental acts are taken to be very narrow and as soon as you add some form of apparatus to complete the act it ceases to become an issue.

    If you want to get rid of 101 then get rid of it – changes like this just introduce new avenues for dispute. I am also unsure how you can effectively assess allowability in some cases without some reference to at least the state of the art. In UK terms “what have added to the stock of human knowledge” and is that anything more than something for which a patent should not be granted.

  16. Fred February 1, 2017 6:40 am

    Looks very similar to EPC, 101(b) defining exceptions as 52(2) EPC does and the “as a whole” expresssion corresponding to the terms “as such” of 52(3) EPC.

    Regarding 101(c), it corresponds to the caselaw of the Courts of Appeal of EPO interpreting the “as such” terms. It took a while to have this caselaw, meaning it was no so obvious to derive it. So it is a good idea to state it clearly right now.

  17. step back February 1, 2017 7:23 am

    Are a bunch of lawyers smarter than yeast?
    Is there a “mind”?
    And more to the point, a “human” one?
    Or is that just an abstract delusion that the primate’s biological brain organ conjures up among the many other misfirings of its neurons?

    https://linawaydotcom.files.wordpress.com/2013/07/albert_einstein_quote_by_2paleontologys-d4ybaex.jpg

  18. Anon February 1, 2017 7:45 am

    Mr. Snyder,

    You continue to tread blindly in the terrain of law. Your “If the judicial exceptions are seen expressions of judicial equitable discretion” clenches tight your eyes to the separation of powers and the direct provision of Constitutional authority to write the statutory law that is patent law.

  19. You Know Who I Am February 1, 2017 9:20 am

    Same separation of powers provides equitable discretion for the judiciary, and perhaps the executive too anon. It does not just flow one way. Did you read the paper?

  20. Night Writer February 1, 2017 10:21 am

    You know, I hope the IPO is using the fact that business analyst are saying that Google is a failure at creating revenue from innovation or even innovating after their initial innovation.

    So, why in the world would anyone listen to what this company has to say about innovation? The business analyst are harsh. Google is a one trick pony that could collapse overnight if they lost their search revenue. (which explains a lot.)

  21. Mark Nowotarski February 1, 2017 4:57 pm

    I’m not sure there is enough incentive to address 101 in Congress until the impact of Alice spreads beyond business methods to software as a whole and spreads beyond diagnostics to healthcare as a whole. Then there will be enough at stake to address.

  22. Bastian Best February 1, 2017 5:24 pm

    Nice to see that this proposal seems to align the US system very much with the EPO system!

    Just replace “exists in nature independently of and prior to any human activity, or exists solely in the human mind” with “lacks technical character”, and you are almost at the EPO’s “any hardware” approach (https://www.youtube.com/watch?v=XSqu1ZcNeIM).

    The notion that eligibility and novelty/obviousness should be separate requirements is also long established at the EPO, see http://www.europeansoftwarepatents.com/software-patents-in-europe-7-principles/ at point (d).

  23. Anon February 1, 2017 10:20 pm

    Mr. Snyder,

    You still have it wrong in the first place, so your “flows both ways” is a non sequitur to that direct point.

  24. JBS February 3, 2017 4:53 pm

    @15

    “I’ve found that using the bark of the Redwood tree is an effective treatment for several serious illnesses. However, under this dicta since it exists in the natural world then I cant have a patent for it.”

    Correct, you are not allowed to claim a composition of matter to redwood bark. But under both the current regime and the proposed 101 amendments, you are absolutely free to pursue claims directed to a method of using redwood bark to treat an illness.

    This is the same in the UK as well.

  25. B February 20, 2017 2:30 pm

    “I do think the time is now to take action on a legislative fix to § 101, and I think there is enough of an appetite in the industry to fix the purely subjective, arbitrary and capricious § 101 test being used today”

    The “arbitrary and capricious” description is spot on and depends on whether a particular APJ or CAFC panel cares to actually address claims limitations as an ordered combination, or whether they’re shooting to describe a claim with a bumper sticker.