Change May Be Coming: Members of Congress Release Framework to Fix Patent Eligibility Law

By Eileen McDermott
April 17, 2019

“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

https://depositphotos.com/7784663/stock-photo-time-to-change-concept-clock.htmlIn 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.

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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.”

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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Greg DeLassus April 17, 2019 5:00 pm

    Congress is the only entity likely to solve this problem, so it is heartening to see concrete steps taken toward a Congressional solution. Good news! Thanks for brightening my day with this.

  2. Anon April 17, 2019 5:19 pm

    Bravo.

    (but with a bit of cloud to that silver lining, keeping the Supreme Court out of the picture is ALSO an important step to take)

  3. Pro Say April 17, 2019 6:49 pm

    Like Gene; I, too, am very concerned with what the eventual, actual verbiage is.

    For as we all know only too well, SCOTUS has a way of ignoring, twisting, and overwriting what Congress says and wants when it comes to patent eligible subject matter.

    I’ll sure be e-mailing in my input — no later than tomorrow. Hopefully everyone who cares about American innovation (as well as their own patents and applications) in the years and decades to come does as well.

    This may be the last chance we all have in our lifetimes to stand up and be counted.

  4. Jason Lee April 17, 2019 7:15 pm

    Very good to read Gene Quinn is adding his .02c. I hope Tillis and Coons truly listen to what Gene can add. Patents are dead in America, and if they do not get this right Inventors will be moving to places where they can get protection from patent thieves.

    Current infringers are using the laws and their deep pockets from paying a license for a patent they are using to make money on.

    Patent are more then broken in America, a small patent holder has no chance on Gods green earth to stand a chance in beating a company like Apple or Google that is stealing their IP. Apple and Google will fight them until they bleed you out of cash.

    America needs to stand up for the small patent holders, Sillicon Valley have more money then they even know what to do with. Its time to pay back the companies that they have been avoiding to pay and that have helped them become the giants the are today. I hope more people stand up and fight for the injustice we are seeing against patent holders.

  5. Curious April 17, 2019 7:56 pm

    Economic or commercial principles
    The problem I have with this one is that I can foresee it being used as a huge loophole by which to snare a lot of legitimate technology. These terms need to be explicitly defined, and I just don’t see how the Congress is going to do that.

    keeping the Supreme Court out of the picture is ALSO an important step to take
    Not going to happen in my lifetime … and I plan on living a long time. Moreover, this assumes that the next set of judges will be any better than the current set — an assumption I’m not willing to make.

  6. Pro Say April 17, 2019 7:56 pm

    We are at a patent and innovation crossroads in America.

    All of my fellow inventors, their counsel, their families, and their supporters:

    Now is the time — likely the last time we’ll have in our lifetimes — to stand up and be counted.

    This is still America. Still a country where the small can overcome the big. Where the relatively poor and broke can defeat the rich. Where right can overcome wrong.

    Yes; we can the beat the corporate behemoths that are stealing our inventions with impunity.

    If we stand as one.

    Here’s the e-mail I just sent. Please join me with your own e-mails, calls, and letters.

    The time is now.

    First, thank you all for working so hard to fix the mess that the Supreme Court has made of Section 101.

    As we all know only too well, 101 has been — and continues to be — a pox on American innovation.

    Every time the Patent Office, the Federal Courts, and even the Supreme Court denies and/or extinguishes a patent (and there have been untold 1,000’s of such denials and extinguishments in the last 7+ years), foreign governments and companies secretly and silently rejoice; because that technology is now free for the taking.

    Free for THEIR taking.

    We have, frankly, become a patent backwater; an innovation 3rd world country.

    The Chinese and the Europeans are eating our lunch and stealing our innovations left and right.

    My worries concerning the Draft Outline of Section 101 Reform are these:

    Re: • Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent protection. The sole list of exclusions might include the following categories, for example:

    1. But exactly what are “Fundamental scientific principles?” How are/would they be defined? Is it even possible to define such principles?

    Because, rest assured, if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    2. But exactly what are “Economic or commercial principles?” As is the case with fundamental scientific principles, how are/would they be defined? Is it even possible to define such principles?

    Because, rest assured, if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    Re: • Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.

    3. But exactly what is “generic technical language” and “generic functional language?” How are/would they be defined? Is it even possible to define such terms? What does “generic” mean in the patent universe? What’s “technical” and what is not? What’s “functional” and what is not?

    Once again; if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    Re: • Statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.

    4. Yes. It is critical that your legislation specifically and explicitly abrogate by name the cases which have caused so much of the problem; including but not necessarily limited to Alice and Mayo.

    Because, if you don’t, SCOTUS, the Federal Courts, and potentially the Patent Office will continue to rely in part or in whole on these precedental cases to block and cancel American innovation.

    Frankly, the only way to be sure that America doesn’t once again find itself in this untenable position is to eliminate Section 101 entirely.

    Sections 102, 103, 112, and the other requirements for patents have always done their job; done what Congress wanted.

    Let them return to doing the job they have for so long proved they’re capable to do.

    America doesn’t need 101.

    As an Independent Inventor, I stand ready to lend whatever assistance I can to get this Section 101 right for America.

    Please feel free to contact me if and as needed.

    Thank you again for your efforts,

    (name & contact information)

  7. Ternary April 17, 2019 9:11 pm

    I agree with Curious and Pro Say. What the heck do these terms mean? They appear to actually codify SCOTUS ‘s “directed to.” This will make things worse, not better. What are pure mathematical formulas? What about: being directed to pure mathematical formulas? It appears that the anti-patent crowd may succeed in turning Alice into statutory law under the guise of improving the situation. We see this effort being materialized in “Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.”

    This is exactly what Alice did: an otherwise patent eligible computer implemented invention being declared patent ineligible because of reciting “generic technical language.” (we are back at routine and conventional).

    I said it before and I will say it again: many current (and most future) inventions will be computer realizable when articulated in software or in computer understandable terms. In electronics, in AI, in medicine, in shopping, in services, in manufacturing. Basically in anything. The listed categories are still “old timer” interpretations of the world.

    I suggest that the 101 Proposal as drafted by AIPLA is the one that should make it into law. See: https://www.ipo.org/wp-content/uploads/2018/06/IPO-AIPLA-Ltr-to-Iancu-re-Joint-101-Proposal.pdf. Any further limitations reflect the influence of interest groups.

  8. Paul Morinville April 18, 2019 3:51 am

    Economic or commercial principles exception is nothing but an attempt to protect big tech monopolies that are all built on this exception.

    Shame on the 101 round table.

  9. Night Writer April 18, 2019 7:59 am

    @7 Ternary

    Good comments.

    I think it is incredibly naïve if anyone thinks there is going to be patent reform with a major war. There is so much money being poured into burning down the patent system and there are so many academics that have made so much money off of writing so much garbage about how bad the patent system is.

    Plus all the PR that has gone into it. The average person thinks that there are nothing but trolls that get patents and that the whole system is corrupt.

  10. concerned April 18, 2019 10:02 am

    Any downside with replacing “economic or commercial principles” with the exclusion of “applying a generic computer to a known solution prevalent in commence”?

    Personally I like eliminating 101 completely and allowing 102, 103 and 112 doing all the heavy lifting. However, I do see the point of excluding putting a computer on things that have been no problem to accomplish for years. For example, making appointments that were done for years with pencil and paper. Adding a computer did not add anything new.

  11. Ternary April 18, 2019 10:39 am

    One result of a new 101 Section should be that Benson is overturned. Benson, as claimed, is a technical application and a technical solution of a computer problem. The solution of Benson in at least one claim is directed to a shift register, which is a technical device. Benson does not fall in one of the proposed categories. But Benson could be considered ineligible under “generic technical language.”

    If Benson still applies after a new 101 Section we of course have achieved pretty much nothing. A new 101 Section has to explicitly state that an invention with utility that meets the requirement of being a machine, a process, etc. is patent eligible.

    The efforts of Congress should correct the blatant misadventures of SCOTUS, not codify them.

  12. Ternary April 18, 2019 10:55 am

    Concerned @10. Pencil and paper is not the correct test for evaluating patent eligibility of computer implemented inventions. This is one of the reasons we are in trouble with 101. As to your example: Scheduling is one of the most difficult problems to be automated in supply chain management as well in other problems. Furthermore, computer based scheduling offers opportunities like automatic alarms, re-scheduling when conflicts occur, setting priorities, etc. In this case 102 and 103 would be excellent tools to assess a computerized scheduling application “without more” invention. No need at all to bring in 101.

    I am a bit surprised to see this comment made particularly by you, because your application (if you are the same “concerned”) is heavily scrutinized because of being considered potentially “paper and pencil” like.

  13. Anon April 18, 2019 11:25 am

    concerned,

    Any downside?

    All the downside in the world.

    What exactly is this mythical “generic computer?”

    How do you “apply” one?

    The bottom line here is that you appear ready to swill the Kool-Aid that is relentlessly pushed by those who do not want to protection innovation in most readily available form.

    I call that being part of the problem.

  14. Jam April 18, 2019 1:42 pm

    The pessimist would argue that this is not good enough and is moving in the wrong direction: Codifying ineligible categories will have courts continue to fabricate logically deficient opinions that shoehorn claims into an ineligible category. The “practical application” test will be nothing more than the new “machine … or improvement thereof” language that courts will pay lip service to, discuss for 5 to 10 pages, and summarily ignore on their way to invalidating the next patent.

    To address the above, in 101 change “MAY obtain a patent therefore” to “SHALL obtain a patent therefore” to wipe out the judicial exceptions and create a safe harbor for claims to software implemented on a computer. Coincidentally, this also creates a safe harbor for claims to medical diagnostics implemented with a computer and for claims to genetic treatments that are analyzed by a computer.

  15. concerned April 18, 2019 2:46 pm

    Ternary/Anon:

    Thank you for your responses and clarifications. Back to the drawing board. LOL.

    Ternary: “I am a bit surprised to see this comment made particularly by you, because your application (if you are the same “concerned”) is heavily scrutinized because of being considered potentially “paper and pencil” like.”

    Yet attorneys, working professionals and experts all had paper and pencil for 63 years and never solved the problem. My invention is substantially more than paper and pencil.

    Note: The examiner apparently wanted to approved my application, said it had patentability 3 times in phone interview. Got rejected from above apparently.

  16. Anon April 18, 2019 4:35 pm

    concerned,

    Apologies if that came across harsh – and I can see in your immediate response the very answer to your question:

    Yet attorneys, working professionals and experts all had paper and pencil for 63 years and never solved the problem. My invention is substantially more than paper and pencil.

    YOU feel that way because you were involved in the innovation. But just as sure that YOU also mouthed the words “Adding a computer did not add anything new,” people WILL SAY that yours could have been the exact same — and it does not matter that it was not (this is a obvious is not novelty point of law). Just because no one did what you did (ever), does NOT mean that it escapes the clutches of “obviousness” nor the (especially pernicious) expansion of “obviousness” into eligibility.

  17. concerned April 19, 2019 4:09 am

    Point well taken on the “could have.”

    We knew in kindergarten that woulda, coulda, shoulda was a suspect statement. And the woulda, coulda, shoulda is equally suspect in patent eligibility, especially when there is great personal gain on the woulda and coulda aspects of the invention, but no follow through on the shoulda.

    No one would take me seriously if I told them that I “could have” pick the mega millions lottery numbers, but choose to work long, lousy hours making minimum wage with no insurance. That is the parallel argument in my patent prosecution..”well understood, routine and convention” yet the downside of no solution has been overwhelming and the solution long sought. Illogical on the surface.

    A consolation woulda, coulda, shoulda response to the harmed parties is ill advised.

  18. Anon April 19, 2019 9:35 am

    ANY “framework” built on any semblance of giving the Gordian Knot views of the Supreme Court any type of semblance of legitimacy is doomed to failure.

    The root cause is the Supreme Court.

    The answer cannot be taking what they (the Supremes) want and “playing nice” by attempting some type of compromise.

    Congress needs to man up and recognize that it has the authority and that the Court does not.

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