“I just hope that whatever the ultimate statutory language is, it is very carefully limited and narrowly tailored; and I must confess that it worries me a little that the framework says that reciting generic language won’t be enough to save an otherwise ineligible claim.” – Gene Quinn
In a promising indication that there is real momentum on The Hill to fix Section 101 law, several Senators and Representatives today proposed a framework for addressing 101-related patent reform.
Senators Thom Tillis (R-NC) and Chris Coons (D-DE)—respectively, Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property—and Representatives Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee; Hank Johnson (D-GA-4), Chair of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet; and Steve Stivers (R-OH-15) announced earlier today indicating that “months of hard work by the Senators and Representatives has led to this bipartisan, bicameral framework.”
IPWatchdog has been reporting for some time that closed-door meetings have been held with stakeholders and members of congress to gather information on the problems with patent eligibility law. IPWatchdog also has been told that the relevant members of congress intend to hold regular public hearings on the topic beginning soon.
The framework, available here, includes proposals to “statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter” and to restrict statutory exceptions to Section 101 to a specified list of categories, including:
- Fundamental scientific principles;
- Products that exist solely and exclusively in nature;
- Pure mathematical formulas;
- Economic or commercial principles;
- Mental activities.
“I think it’s wise for congress to hit the reset button and reassert its authority with respect to the statutory requirements, and getting rid of the non-statutory judicial exceptions is an absolute must,” said Gene Quinn, patent attorney and President and CEO of IPWatchdog, Inc. “I just hope that whatever the ultimate statutory language is, it is very carefully limited and narrowly tailored; and I must confess that it worries me a little that the framework says that reciting generic language won’t be enough to save an otherwise ineligible claim.”
The last part of Quinn’s comment relates to one of the framework’s principles, which says that the statute should “[e]nsure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.”
“This harkens back a little too much to what the Supreme Court and Federal Circuit have done with respect to refusing to consider what they call extra solution activity,” Quinn explained. “Certainly, simple additions shouldn’t turn something obviously unpatentable into something that is patentable, but why does that have to be an issue under Section 101 at all? Allowing this to go into the statute could undermine everything.”
The framework would also “make clear that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.”
Tillis and Coons encouraged stakeholders to contact their dedicated email address with input on the framework: IntellectualProperty@tillis.senate.gov.
“Today, U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine,” wrote Senator Coons. “I look forward to continuing to receive feedback as we craft a legislative solution that encourages innovation.”
Stivers added that fields such as biologics research and diagnostics will only thrive “if we can protect those innovations with the patent protection that rewards the risks and investment necessary to discover the next great idea.”
Image Source: Deposit Photos
Photo by donscarpo