U.S. Companies and Groups to Congress: the Section 101 Reform Draft is Good and Genes are Safe

By Eileen McDermott
June 26, 2019

https://depositphotos.com/136625164/stock-photo-person-holding-yellow-stick-note.htmlSeventy-two companies and organizations, ranging from Tivo to Bristol-Myers Squibb and from the American Conservative Union to the Alliance of U.S. Startups & Inventors for Jobs (USIJ)— as well as retired Federal Circuit Chief Judge Paul Michel—have sent a letter to Senators Thom Tillis and Chris Coons and Representatives Hank Johnson, Doug Collins, and Steve Stivers in support of the current draft language to reform Section 101 of the U.S. Patent Act. The letter comes as the patent community eagerly awaits a new version of the bill, following three hearings and 45 witnesses in which most voiced their general support for the approach taken in the draft, but several sticking points were identified. The next iteration is expected soon after Congress’ July 4 recess.

The letter says that judicially created loopholes are sending U.S. innovation overseas and discouraging inventors from pursuing R&D in critical areas. Only about 200 words long, it ended with a jab at arguments touted by the American Civil Liberties Union (ACLU) and others that the changes in the draft would allow too much flexibility, resulting in a rush to patent human genes:

We also write to make clear in no uncertain terms that under your proposed legislation, naturally occurring materials and compositions as they exist in nature – including human genes – will remain patent ineligible, despite well-publicized claims to the contrary.

Despite the strong show of support for the current draft, Tillis indicated at the end of the last Senate hearing that changes will be made to the text based on concerns raised on both sides about the proposed Section 112(f), the definition of “utility”, and the effects on academic research, for example. It remains to be seen if any change to specifically address the repeated claims made by the ACLU that human genes will become patentable under the new language will be inserted. While many read the draft as abrogating the Myriad ruling, Senator Coons at one point in the hearings said that was not his intention.

Paul Morinville, the only independent inventor to testify in the Senate IP Subcommittee hearings, this week published an article with IPWatchdog urging inventors not to support the draft bill. While Morinville said that the change to Section 101 would be an improvement, upon two weeks of reflection, he has decided not to support the bill as drafted because the damage would be largely transferred to Sections 112(f) and 100(k) and any short term advantage it may have is outweighed by the broader damage it will do to the U.S. patent system. Morinville wrote:

If we pass the draft legislation, China will certainty overtake us in artificial intelligence and other technologies critical to our economic and national security. Big tech monopolies will continue to be protected until someday years from now we look back to figure out what happened. But by then, it will be too late.

I’ve made my decision. If the draft legislation codifies 101 exceptions, or if it includes the draft changes to 100 and 112, I am going to do everything that I can to kill the legislation. I hope that other inventors will join me.

Help From the House?

Last week, Rep. Steve Stivers (R-OH) took part in a panel at the American Enterprise Institute (AEI ) in which he indicated that House Judiciary Committee Chairman Jerrold Nadler and House IP Subcommittee Chair Hank Johnson have expressed interest in the patent eligibility topic, “but I think right now Jerry Nadler is a little more focused on ‘IT’ than ‘IP’—and IT means impeach Trump,” Stivers said. “But I hope we get to IP soon.”

Stivers also said that, “we’ll probably end up listing some things that can’t be patented, and my guess is something that occurs in nature will be listed” in order to address the concerns over gene patenting.

 

 

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 3 Comments comments. Join the discussion.

  1. B June 26, 2019 11:08 am

    Here’s a bit of irony. The landmark Supreme Court case of Markman v. Westview Instruments (1996) is a business method patent- an inventory control system run on a computer. The Markman claims would be DOA at the Federal Circuit and Supreme Court today.

    Personally I thought Judge Michel was 100% dead-on in his testimony. I don’t thing the revisions to 112(f) are necessary, but I think I can work around them unless the courts go apeshyte on it, which is a possibility.

    100(k) is a bit more problematic. The word “technology” might be replaced with “human endeavor.” Are games “technology?” I get that they need 100(k) to address the human genome.

  2. Greg DeLassus June 26, 2019 12:37 pm

    I feel very optimistic about the chances for an improvement to U.S. patent law here. There is very palpable forward momentum behind the improvements.

  3. Jeff Hardin June 26, 2019 4:18 pm

    On 112(f):
    >> “Tillis indicated at the end of the last Senate hearing that changes will be made to the text based on concerns raised on both sides about the proposed Section 112(f)”.

    I do hope that Senator Tillis remains true to his statement. Aside from the issues Paul Morinville describes, expanding 112(f), as the May 22 draft does, would increase uncertainty and would not provide predictability or economic efficiency, which undermines the purpose of the published patent document. This paper on Law360 explains it well: https://www.law360.com/articles/1172368/senate-may-want-to-reconsider-section-112-f-patent-reform

    On 100(k):
    100(k) has a problem in that the clause “through human intervention” describes the resulting utility, which would render many software and hardware inventions ineligible. Many software/hardware inventions are designed wherein the resulting utility (the thing that performs) is autonomous and does not require human intervention in its utility.

    To solve this problem, “through human intervention” should either be removed entirely, or relocated to describe the “invention or discovery”, which is what I believe is Congress’ intent – the invention or discovery needs human intervention, not the utility. Furthermore, placing the word “applied” at the beginning of discovery would also help, not only with this clause, but would also solve the problem with the word “technology”, as many have expressed here.

    So, 100(k):
    The term “useful” means any invention or applied discovery that provides specific and practical utility [as disclosed and/or possessed by the inventor(s)].

    (Note: I am not the only entity who has contributed to foregoing.)

    On determining if the utility is “specific and practical”, I submit that this inquiry should lie with the inventor/applicant, which is why the content was added within the brackets[ ]. The inquiry should be:

    Q: “Is it specific?”
    Inventor/applicant: “Yes. The specification described it and/or I had possession of it.”
    Q: “Is it practical?”
    Inventor/applicant: “I find it practical. Yes. The claim shows/does what it was intended to show/do.”

    The end.

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