For IP attorneys and agents representing worthy patentees, the situation with “inventiveness” under 35 U.S.C. § 101, a concept introduced by the U.S. Supreme Court in its Triad of eligibility decisions of 2012-2014 — Myriad, Mayo and Alice, has become confusing and frustrating. The Federal Circuit continues trying to find the proper legal distance between absolute novelty and eligibility of a claimed invention, by applying a plethora of bewildering tests — asking whether additional claim limitations (i.e., in addition to a natural law, phenomenon or abstract idea) are “well-understood,” “routine,” “conventional,” “not markedly different,” “not inventive,” and other such bewildering terms. Superficially only, these formulations seem grounded in obviousness law. Yet, even if so, they are applied without nexus to the court’s own long history of obviousness jurisprudence on these topics.
Although it may be a difficult road in which to embark, in our recent paper in AIPLA QJ, “The Time Has Come to Amend 35 U.S.C. § 101,” we (Jorge Goldstein, Michelle Holoubek and Krish Thakker, of Sterne, Kessler, Goldstein & Fox P.L.L.C.), believe a campaign for legislative reform and clarification should start now.
We propose the following amendment to §101 (additions emphasized):
Whoever invents or discovers any new and useful invention, which is a physically implemented process, or machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor. While the claimed invention is subject to the conditions and requirements of other sections of this title, no further conditions than novelty and usefulness of the claimed invention as a whole are required under this Section.
At the outset, we describe the unworkable state of eligibility law and explain why the above amendment is necessary. We then explain why the proposed amendment makes § 101 workable again, and how it changes recent SCOTUS jurisprudence in the Triad without disrupting historically earlier jurisprudence on the judicially created Exceptions to eligibility (i.e. abstract ideas, laws of nature and natural phenomena). We further analyze the potential impact of confusing § 101 jurisprudence on the commercialization of U.S. innovation, and compare it to the situation in Europe, where the concept of eligibility is more relaxed than it is here. We evaluate the constitutionality of the proposal and provide a resolution for the issue of pre-emption based on other areas of the patent law, such as §§§ 102, 103 and/or 112. And, we conclude that the proposed amendment: (i) passes constitutional muster; (ii) places the state of patent eligibility back on a firm legal footing; and (iii) would alleviate encumbrances on major sectors of the U.S.’ inventing and investing community.
Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.