Patent Masters™ Symposium Delivers Three Recommendations to Congress on Patent Reform

By Gene Quinn
June 30, 2019

Capitol BuildingIPWatchdog’s third Patent Masters™ Symposium was held this past week in Arlington, Virginia, and included some of the best and brightest in the patent world. The event focused on the effects of Alice five years on, but more importantly, identified practical approaches for navigating Section 101 law now and in the future. Sponsored by LexisNexis, the two-day event touched on themes including how the USPTO’s incentive system for both examiners and Patent Trial and Appeal Board judges may be influencing practices that are detrimental to patent owners; how the overall culture at the USPTO may be more crucial than any guidance that comes down from the top; how the U.S. patent examination system compares with Europe’s (courtesy of special guest Grant Philpott, Chief Operating Officer for patenting in the new Information and Communications Technologies technical area at the European Patent Office); and concrete tips for writing patent applications to avoid the Section 101 morass.

Throughout the event, I also asked attendees to vote on several statements in an effort to come to consensus on certain points relating to the pending patent reform legislation. Those statements that received at least 80% of the vote are included in the open letter (see also below), have been sent to the Senators and Representatives working on the next draft of the new Section 101. A revised version of the proposed 101 reform that takes into account the testimony of nearly four-dozen witnesses is expected after the July 4 recess. I hope these guiding principles—on which many of those who testified at the hearings and participated in the roundtables weighed in—will help Congress to strike the right balance.

[[Advertisement]]

 

June 30, 2019

Senator Thom Tillis
Chair, Senate IP Subcommittee
113 Dirksen Senate Office Building
Washington, DC 20510

Senator Chris Coons
Ranking Member, Senate IP Subcommittee
218 Russel Senate Office Building
Washington, DC 20510

Representative Doug Collins
Ranking Member, House Judiciary Committee
1504 Longworth House Office Building
Washington, DC 20515

Representative Hank Johnson
Chair, House IP Subcommittee
2240 Rayburn House Office Building
Washington, DC 20510

Representative Steve Stivers
2234 Rayburn House Office Building
Washington, DC 20515

RE: Patent Eligibility

Dear Senator Tillis, Senator Coons, Representative Collins, Representative Johnson and Representative Stivers:

We applaud your efforts over the last several months to engage stakeholders on the important issue of patent eligibility reform. We view this effort as critical for the future of a variety of high-tech and life sciences industries in the United States.

As was discussed during testimony in recent hearings of the Senate IP Subcommittee, the Supreme Court has refused four (4) dozen petitions for certiorari on the issue of patent eligibility since issuing its decision in in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The assumption must, therefore, be that the Supreme Court is content with its patent eligibility jurisprudence.

Unfortunately, Supreme Court jurisprudence on patent eligibility is irreconcilable and has created tremendous uncertainty in an area where long term certainty is absolutely essential. Innovation typically takes a great deal of time, and commercializing that innovation takes even more time. Without long term stability and predictability investment decisions and incentives become skewed.

The United States Court of Appeals for the Federal Circuit has explained in at least several decisions that they feel handcuffed by Supreme Court jurisprudence. But even more problematic is the wide divergence of outcomes among Federal Circuit panels. Put simply, the Supreme Court test for patent eligibility is subjective and unpredictable. Congress must act.

Amidst this uncertainty, and with the fifth anniversary of the Supreme Court’s Alice decision having just passed, last week IPWatchdog.com held a two-day symposium to discuss the state of patent eligibility in the United States.  During this symposium overwhelming consensus was achieved by the Patent Masters™ faculty and symposium attendees on a variety of principles and recommendations.

The following statements received unanimous consent during the Patent Masters™ Symposium:

  1. Supreme Court decisions interpreting 35 U.S.C. 101 have harmed the U.S. economy.
  2. Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of the useful arts.
  3. Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to medical diagnostics.
  4. Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to important areas of software innovations, such as artificial intelligence and machine learning.
  5. Supreme Court decisions interpreting 35 U.S.C. 101 have diminished America’s global competitiveness.
  6. The Supreme Court was unquestionably incorrect in AMP v. Myriad Genetics when they said discoveries are not patent eligible. The Constitution explicitly says otherwise, as does 35 U.S.C. 101.

The following statements achieved consent from at least eighty-percent (80%) of those attending the symposium:

  1. The Supreme Court’s decisions on patent eligibility in Funk Brothers, Benson, Flook, Diehr, Chakrabarty, Bilski, Mayo, Myriad and Alice are hopelessly irreconcilable. [91% consensus]
  2. Supreme Court decisions interpreting 35 U.S.C. 101 are driving innovation and investment overseas. [86% consensus]
  3. Supreme Court decisions interpreting 35 U.S.C. 101 violate separation of powers by adding “judicial exceptions” and usurping Congressional authority to define what is patent eligible. [83% consensus]
  4. The 2019 Revised Patent Subject Matter Eligibility Guidance published by the USPTO creates the proper analytical framework for approaching questions of patent eligibility. [82% consensus]

Therefore, it is the recommendation of the undersigned attendees of the Patent Masters™ Symposium that:

  1. Congress should legislatively overrule Alice v. CLS Bank.
  2. Congress should legislatively overrule Mayo v. Prometheus.
  3. Congress should explicitly prohibit “judicial exceptions” to patent eligibility.

In conclusion, we greatly appreciate your work on this important matter, and we enthusiastically support your efforts.  We stand ready to help in any way possible. Strengthening the U.S. patent system for future generations is of paramount importance.

Very truly yours,

Eugene R. Quinn, Jr., President & CEO, IPWatchdog, Inc.

Paul Michel, Retired Chief Judge, U.S. Court of Appeals for the Federal Circuit

cc: Andrei Iancu, Director of the USPTO

 

Meredith Addy, Partner, AddyHart, P.C.

James Carmichael, Carmichael IP

Brad Close, Executive Vice President, Transpacific IP

Nicholas D’Andrea, Patent Agent

Kate Gaudry, PhD, Patent Attorney (on behalf of herself)

Robert Greenspoon, Founding Partner, Flachsbart & Greenspoon, LLC

Chris Israel, Executive Director, Alliance for U.S. Startups and Inventors for Jobs

Efrat Kasznik, President, Foresight Valuation Group, LLC

Sherry Knowles, Principal, Knowles Intellectual Property Strategies, LLC

Jack Lu, Founding Partner and Chief Economist, IPMAP LLC

Lissi Mojica, Managing Director, Answers IP, LLC

Mark Nowatarski, Principal, Markets, Patents & Alliances, LLC

Isaac T. Slutsky, Shareholder, Brooks Kushman

Bernard Tomsa, Shareholder, Brooks Kushman

John White, Partner, Berenato & White, LLC

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 9 Comments comments.

  1. Pro Say June 30, 2019 10:18 pm

    “All your patents are belong to us.”

    –SCOTUS

  2. Patents are dead in The new America June 30, 2019 10:40 pm

    Congress works for corporations. Silicon Valley will carve out new loopholes for them selves to continue to steal and keep the profits they made off of STOLEN IPs to them selves.

    America is a crubiling empire as Germany and Chine continue to help strengthen their IPs and move forward to surpass America in inventions. They say greed will eat it self, and there is no better example of just that as America bends over to pass the AIA Act PTAB EBay Alice Mayo…. all these bills were sponsored and crafted by Silicon Valley to keep patent theft weak so the top 1% can dominate and keep all the profits for them selves. It’s a pipe dream to think Congress would do anything as their pockets are all lined with Silicon Valley donations. It’s game over.

  3. Mark Martens July 1, 2019 1:27 am

    Wow, that’s quite strong then.

    No. 4 is especially interesting because it appears to align the current USPTO guidance with the interests of inventors.

  4. Concerned July 1, 2019 4:22 am

    Only 83% agreed on statement #3 is sad to me. Somehow 17% felt it is alright for SCOTUS to both add words to law and also not define such words. I feel the preceding functions are the responsibility of Congress, our elected officials.

    Then again, who are these 17% and who does that group really represent?

  5. Benny July 1, 2019 5:27 am

    Pro Say,
    Only someone with teenage kids would understand that meme. Everyone else needs an animated explanation (with hand puppets, preferably).

  6. Simon Liu July 1, 2019 7:30 am

    This is nothing but political theatre. When are people going to snap out of it? Congress works for the people that donate the largest contributions to their party. Silicon Vally donates multi million to keep patent reform dead. As they continue to steal people’s IP with zero ramifications in ever getting punished for doing so. No coincidence patent values have dropped 90% but Silicon Vallys stock have exponentially exploded since they introduced the AIA Act back in 2011. They say greed will kill it self and America is doing a fine job proving this statement lives on.

  7. Jeff Hardin July 1, 2019 1:02 pm

    On Patent Reform, I recently provided my written testimony to the USPTO for them to provide specific legislative recommendations pursuant to the SUCCESS Act. I also mentioned Section 101 reform in my speech on May 8, but given that 101 reform is underway and seems to be shaping up well (mind you, there are concerns over 100 and 112), I opted to leave that out of my paper.

    My paper makes a strong case that if the Patent Office is going to provide legislative recommendations to the Patent Office to help address equal opportunity in those underrepresented classes who seek to obtain patents, it MUST coincide with equal outcome in the ability for all underrepresented inventors to enforce their patents once granted, as the AIA and recent SCOTUS decisions have unintentionally created a new underrepresented class: the independent inventor and small business.

    You may find that testimony here:
    https://drive.google.com/file/d/1ujiVpxwn7OaMqjHppdbHzKBYG16DzrrH/view

    Let’s hope the USPTO indeed provides stakeholder recommendations to Congress come this October with their report.

  8. Pro Say July 1, 2019 7:45 pm

    Thanks Jeff @ 7. Looking forward to digging in.

  9. Jeff Hardin July 1, 2019 8:10 pm

    typo: “if the Patent Office is going to provide legislative recommendations to the Patent Office to help address equal opportunity in those underrepresented classes who seek to obtain patents”

    should read: “if the Patent Office is going to provide legislative recommendations to **Congress** to help address equal opportunity in those underrepresented classes who seek to obtain patents”