In 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 anduseful process, machine, manufacture, orcomposition of matter, or any new anduseful improvement thereto, may obtainshall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements ofset 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.