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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