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On Thursday, October 25th, the Boston Patent Law Association (BPLA) announced its support for a proposal for a legislative fix to 35 U.S.C. § 101, the statute governing basic patentability in U.S. patent law, which was jointly offered earlier this year by the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA). The BPLA now becomes the latest patent law organization to support the proposed legislative amendment to Section 101 that is designed to address major uncertainties in patentability stemming from various cases decided in recent years by the U.S. Supreme Court.
The joint IPO-AIPLA Section 101 legislative amendment was delivered to U.S. Patent and Trademark Office Director Andrei Iancu in a letter dated May 3rd of this year. The proposal includes the addition of language into the current text of the statute which would enable anyone who invents or discovers “and claims as an invention” any useful process, machine, manufacture, composition of matter or any improvement thereof to be entitled to a patent. The proposal would also set out sole exceptions to subject matter eligibility which would exclude material “if and only if the claimed invention as a whole (i) exists in nature independently of and prior to any human activity or (ii) is performed solely in the human mind.” The legislative proposal would also include a sole eligibility standard so that the eligibility of claimed inventions will be determined without regard to the requirements of Section 102, 103 or 112; the manner in which the invention was made or discovered; or whether the claimed invention includes an inventive concept.
This legislative proposal is very specifically designed to target the effects of a trio of Supreme Court decisions which have proven to be disastrous to many patent owners trying to assert and protect their own intellectual property. In Mayo v. Prometheus (2012), the Supreme Court reversed a previous Federal Circuit ruling by invalidating a patent covering a method of administering a drug to a patient, measuring metabolites of the drug and then adjusting the dosage of the drug in response, holding that the patent only covered an unpatentable “natural law.” In Association for Molecular Pathology v. Myriad Genetics (2013), SCOTUS invalidated patents covering isolated DNA genes to determine cancer risk, holding that the mere isolation of genes found in nature isn’t patent-eligible. Finally, in Alice Corporation v. CLS Bank International (2014), the Supreme Court nixed a patent covering computer-implemented methods of using an escrow service to facilitate electronic transactions because the patent claims were determined to be directed to an abstract idea ineligible for patent protection under Section 101.
In supporting the IPO-AIPLA Section 101 proposal, BPLA President Rory P. Pheiffer said that, “this proposed amendment to Section 101 will clarify the murkiness that has ensued in response to the Supreme Court’s decisions in Mayo, Myriad, and Alice. Consistency is essential to a strong patent system, and this solution will keep the United States at the forefront in embracing innovative new technologies.” The narrowing of patent eligibility in the incredibly valuable fields of personalized medicine and computer-implemented methods resulting from these Supreme Court decisions has been cited as a key weakness of the U.S. patent system in rankings released by the U.S. Chamber of Commerce in recent years, a period during which the U.S. patent system’s ranking has dropped precipitously.
The BPLA notes that the proposed legislative fix achieves multiple goals in the face of problems that have arisen from the federal judiciary’s interpretation of Section 101 patent eligibility in the wake of the aforementioned Supreme Court decisions. The amendment would provide greater certainty as to what constitutes patentable subject matter; allow for innovative developments in software and medical diagnostics to be considered patent-eligible; focus the evaluation of subject matter eligibility on the invention as a whole; and more clearly separates Section 101 analysis from analysis under Section 102 for novelty, Section 103 for obviousness and Section 112 for specification.
The BPLA’s support of the IPO-AIPLA proposal follows the New York Intellectual Property Law Association’s decision to support the proposal to fix patent-eligibility issues under the current interpretation of Section 101.
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Join the Discussion
14 comments so far.
Joachim Martillo
November 14, 2018 12:41 pmI could build a visualization tool that could serve as a supplement or alternative to §101, §102, and §103, but no one ever understands when I try to explain epistemological cadasters.
See Cutting Through Gordian Knot of Patent-Eligibility.
Joachim CS Martillo
November 14, 2018 12:21 pmI wasn’t able to attend the meeting at which the BPLA association signed on to the AIPLA proposal.
I don’t quite understand why Congress could not just define the undefined terms.
From Thinking through the Alice/Mayo Two-Part Test and § 101-Eligibility.
Pro Say
November 8, 2018 02:32 pmGreg @ #7 & 10:
How right you are Greg.
All inventors and their attorneys should include something like the following with all their other §101 args:
Reason # X the §101 Rejection is Improper
Unlike as is the case with Article III Courts, the Patent Office is legally bound to the requirements and limitations of the Federal Administrative Procedures Act (APA).
Therefore, the PTO’s reliance on the undefined term “abstract” to deny — and retroactively cancel — inventors patents / claims for their otherwise deserving – and previously issued — inventions constitute, respectfully, clear and unmistakable administrative abuse.
Justice by analogy is no justice at all.
Such arbitrary, draconian deny / cancel actions violate the APA and are an unconstitutional denial of due process.
Accordingly, the current [rejection / answer / decision / etc.] is arbitrary, capricious, an abuse of discretion, and otherwise not in accordance with law U.S.C. §706(2)(A).
This material error and deficiency is fatal to the alleged [e.g. prima facie] case.
Accordingly, for this reason alone pending claims x – xx are §101 eligible and the rejection should be withdrawn.
Attack / rebut the “something more” (step) in like manner as well.
Night Writer
November 8, 2018 02:25 pm@10 Greg
I like that. Maybe even go further and say that (just like with ‘non-transitory’) that any set of claims that complies with 101 (absent abstract), 102, 103, and 112 is not abstract.
That is actually an excellent idea!!!! That way it would kick it up to the CAFC.
Greg Aharonian
November 8, 2018 10:50 amThe Director of the USPTO has within his power the ability to issue a memo (similar to Kappos’ memo about ‘non-transitory’) ordering PTO examiners and judges NOT, I say NOT, to use the undefined ‘abstract’ in any rejection, for being a violation of the Administrative Procedures Act (using an undefined term is an administrative abuse because the undefined term’s use violates Due Process Public Notice). This would short-circuit all of the Benson-derived 101 caselaw that is based on the undefined ‘abstract’, especially Alice in which Thomas explicitly stated “we ain’t going to define no stinking ‘abstract'”. The cowardice of the patent bar in not demanding that the USPTO stop violating the APA in this matter is grounds for disbarring all of the AIPLA/IPO/BPLA/ABA 101 committees, lawyers who pretty much hate the clients.
Anon
November 6, 2018 11:15 amNight Writer,
It is not that I want to not “get” that we have Alice – on the contrary, it is that I DO “get” that we have Alice and that any action that we take to fix the scoreboard MUST take into account that Alice is here. That being said, I fully disagree with the notion that Alice isn’t going away. Alice must go away. That’s rather the point, isn’t it?
Night Writer
November 6, 2018 07:54 am@7 Gregory
I basically agree with this. The SCOTUS will stick with Alice unless the new statute makes sense. The Scotus can easily just say they don’t think this changes the analysis.
@6 Anon
We have been through this too many times. I get your point. You seem to want to not get that we have Alice. There she blows! And she isn’t going away.
Gregory Aharonian
November 5, 2018 03:26 pmThis proposal is scientific and engineering nonsense. Any (software) method that can be expressed in a patent claim, with 112 support in the Spec, can be performed in both hardware and software. Thus, nothing in claim will fall under the exception “performed SOLELY in the human mind” (as evidenced by the AIPLA/IPO failure to give any examples of some invention that can be performed SOLELY in the human mind. The federal judges will realize this, and ignore this statutory language, and fall back to Alice in Wonderland and Hold the Mayo. All this proposed language will do is drive up patentability costs by fostering new forms of rejections.
Anon
November 5, 2018 11:50 am“The holding of Alice that it was unconstitutional to grant the claims because they did not promote …
Not sure why people don’t get that.”
Night Writer,
We’ve been over this before. What you state only feeds the misperception of what it means for a law written by Congress to be unconstitutional (distinguish between three things: a law as enacted being unconstitutional, as opposed to finding that a law as applied being unconstitutional, as opposed to a grant of a patent not being within the law (that law remaining constitutional).
Far too many engage in the type of “constitutional or not” without a proper mooring on what it means for a law to BE unconstitutional (and what remedies that even the Supreme Court may have when faced with a situation that may fall to one {or more} of the three items I listed.
Lost in Norway, per our Marbury case, some Article III court would be required to remain in place for review — but a lot of people think that THAT court must be the Supreme Court, and no such requirement exists in Marbury. What “SCOTUS would do” then would be quite beside the point, as our Constitution grants the power to Congress to engage in jurisdiction stripping — even of the Supreme Court — of any non-original jurisdiction matter of that Supreme Court.
Lost In Norway
November 5, 2018 04:26 amI just look at how some members of congress seemed to melt down in rage it when change in claim standard used in IPRs and imagine what SCOTUS would do if stripped of control of patent law.
I really wish that there was a higher court whose entire job was to hear patent cases. Leave SCOTUS to decide issues that it is actually qualified for.
Night Writer
November 2, 2018 09:49 pmThe holding of Alice that it was unconstitutional to grant the claims because they did not promote …
Not sure why people don’t get that. As an exercise read Alice again and notice that it wouldn’t matter what 101 said as it would not have changed the holding of Alice.
Read Alice and put your new statute in Alice and tell me why the holding would change.
Pro Say
November 2, 2018 04:09 pmYes; this fix would be welcome indeed.
And EG’s addition is excellent.
This said, anything short of the abolishment of the unneeded s101 will still allow SCOTUS to find a way to slip their collective noses under the patent tent.
A persistent bunch they are.
Mike
November 2, 2018 03:32 pm@EG. Bravo. I agree 100%. Congress needs to shun any SCOTUS interaction unless it addresses something constitutional. If SCOTUS doesn’t respect congressionally expressed statutes, then Congress should explicitly write in the law that SCOTUS cannot intervene unless it represents a constituional issue.
And a new Congress should also acknowledge their own error in creating the AIA and when SCOTUS gets something wrong, like Oil States, and undo that blunder.
Still hoping SCOTUS sees the light on the unconstitutional problem of retroactive application of IPRs in violation of takings and due process.
EG
November 2, 2018 08:34 amHey Steve/Gene,
No legislative fix of Section 101 will work unless SCOTUS (and probably the Federal Circuit as well) is specifically barred from reading in any implicit exceptions into the express language of the fix to Section 101.
Indeed, given that SCOTUS is a serial offender in this regard with respect to Section 101 (as well as other patent statutes), Congress needs to exercise the “nuclear option,” namely stripping SCOTUS of any appellate review of patent law matters unless it’s expressly clear that it implicates constitutionality under the Patent Clause or some other aspect of the Constitution, such as the 5th Amendment “due process”/”takings” clauses or potentially the 11th Amendment as it relates to sovereign immunity of state institutions such as state universities that own patent rights. Like the “naughty child” that has to be finally disciplined for repeated misbehavior by being told to go their room, Congress needs legislatively “scream” at SCOTUS to stay out of Congress’ domain to articulate what the patent policy should be as it relates to the Patent Clause, and to reaffirm that the Federal Circuit is the sole arbiter of patent law jurisprudence by removing SCOTUS’s ability to rule on any issue involving patent law that does clearly not implicate such a constitutional issue. No other option will prevent SCOTUS’ insatiable appetite to grasp power and to continually meddle in patent law jurisprudence, thus creating uncertainty and chaos in the U.S. patent system.