Urge Congress to Keep the Established and Efficiently Working Sections 100 and 112 of the U.S. Patent Act

By Mark Marrello
July 2, 2019

“Changing [Sections 100 and 112] would only provide fuel to the courts, strategic infringers, and other bad actors to burn down the patent system again, as they have done in the past with Section 101.”

https://depositphotos.com/70892087/stock-photo-acronym-cta-as-call-to.htmlNow that the Senate Subcommittee on Intellectual Property has concluded its hearings on patent eligibility reform, it appears that the draft changes to Sections 100 and 112 are the last great danger in the overall patent eligibility debate and we must not let our guard down. A new version of the bill is due out sometime after the July 4 holiday; please send the following text with any of your edits to IntellectualProperty@tillis.senate.gov.

Honorable Senators and Representatives Coons, Tillis, Collins, Johnson, and Stivers:

I would like to thank you for your respectable efforts in resolving the patent eligibility mayhem. Your changes to Section 101 bring long awaited hope for U.S. inventors. The draft changes to Sections 100 and 112, however, remain very concerning, as they can be used by the courts, strategic infringers, and other bad actors to undermine the patent system and U.S. innovation.

U.S. inventors live in a world in which the courts have proven over at least a decade that they cannot be trusted with interpreting the patent law as written. The Supreme Court outright ignored the law as explicitly written and created its own law illegally via their “judicial exceptions” to patent eligibility. I wish we lived in a more perfect world, but given the courts’ long, definitively-proven unwillingness and inability to interpret the patent law as written, the only rational solution is to not allow the courts the flexibility to cause further damage to the patent system by codifying the draft changes to Sections 100 and 112.

You will notice that many of the points made by IP stakeholders and writers of articles on patent eligibility reform are driven by a genuine history-proven fear of the courts’ unwillingness and inability to interpret patent laws as written. Please ponder on this carefully, as you cannot ignore the courts’ proven history that is certain to repeat itself. In the current attempt to reform patent eligibility, you not only must include carefully written language as you would want it to be interpreted, but you must also account for the “courts’ damage factor” because whatever language you think is well-written, the courts’ will interpret it in flawed or outright wrong ways. The proof is that there is nothing wrong with the current Section 101, which worked fine for decades until the Supreme Court created the illegal “judicial exceptions”.

Similarly, there is nothing wrong with Sections 100 and 112, which also has worked fine for decades. Therefore, the current Sections 100 and 112 must be left alone and the draft changes to Sections 100 and 112 must be removed. The courts created the incredible damage to the patent system in Section 101 and this will always be remembered as the courts’ liability. If you change the current, long-established, efficiently working Sections 100 and 112, this will create an incredible damage to the patent system similar to the courts’ damage in Section 101, and this will always be remembered as your liability.

If anything, it is wise to think of ways to make the language of the current Sections 100 and 112 more flexible for U.S. inventors to incentivize U.S. inventors. I realize that this suggestion may be too far-fetched for some, so I urge you to simply keep the current language of Sections 100 and 112 and remove the draft proposed changes to those sections. Changing these sections would only provide fuel to the courts, strategic infringers, and other bad actors to burn down the patent system again, as they have done in the past with Section 101.

When you look at the big picture from a long-term perspective, the matter before you is actually simple:

  1. To completely incentivize U.S. inventors in a global race—indeed a war—for global dominance in innovation, or
  2. to get distracted by petty details of the draft changes to Sections 100 and 112 that would allow the courts, strategic infringers, and other bad actors to recreate the very patent eligibility problem you are trying to solve. You have already made a respectable first step in incentivizing U.S. inventors with the changes to Section 101 and I urge you not to ruin or even nullify it via the draft changes to Sections 100 and 112.

Mayo, Alice, and the America Invents Act (AIA) have been tried and failed. Remember where China used to be relative to the U.S. in innovation ten years ago, before Mayo, Alice, and the AIA came into being. China was not even on the radar as an innovation powerhouse. Today, after all the damage done by Mayo, Alice, and the AIA, China is neck-and-neck with and even ahead of the U.S. in critical fields like artificial intelligence, biotechnology, medical innovation, and others. One who does not see the trend is blind or influenced by special interests. A partial or even good enough reform will not reverse this trend or even slightly alter it. The time for partial measures has long passed. If you do not completely incentivize U.S. inventors like inventors were incentivized before Mayo, Alice, and the AIA, China will far outpace the U.S. in critical innovation fields in the next ten years beyond a point of return.

Indeed, China recently revealed the national IP strategy in which China fully supports Chinese inventors by implementing the U.S. patent polices before Mayo, Alice, and the AIA. It is amazing that it is obvious to China that the U.S. patent polices before Mayo, Alice, and the AIA are the way to global innovation dominance, but the same is not obvious to the U.S. It is also amazing to see that China learned from the U.S. past, but the U.S. did not learn from its own past.

Gentlemen, you carry a great responsibility for ensuring a continued U.S. dominance in the world, which directly depends on the U.S. dominance in innovation. Indeed, you will be remembered as saviors of U.S. innovation if you adopt the changes to Section 101 and remove the draft changes to the long-established and efficiently working Sections 100 and 112, which will prevent the courts, strategic infringers, and other bad actors to further damage U.S. innovation. If your goal is to fully incentivize U.S. innovation, just think as a U.S. inventor and ask yourselves what would incentivize and not stifle your innovation? You will quickly realize that adopting the changes to Section 101 and removing the draft changes to Sections 100 and 112 is the answer.

U.S. inventors are the very people who carry the torch of U.S. innovation and it is plainly wise to incentivize them. Many inventors have already given up on the U.S. patent system and have quit inventing. Your patent eligibility reform provides a long-awaited hope for the remaining U.S. inventors who look to you with great expectations.


The Author

Mark Marrello

Mark Marrello is a partner at Imperium Patent Works, LLP. While earning his M.S. and B.S. in Electrical Engineering, Mark worked at Qualcomm Incorporated as a Senior Radio Frequency Integrated Circuit Engineer. Mark’s responsibilities included the design, test, and production ramp up of cutting edge multi-mode and multi-band communication devices. After attaining his M.S. in Electrical Engineering, Mark transitioned to Qualcomm’s in-house legal department and began attending law school in the evening. Upon attaining his J.D., Mark became the second attorney at Bridgelux Incorporated where he singularly managed all intellectual property matters including building a broad patent and trademark portfolio, managing litigation issues, negotiating licensing agreements, drafting business and employee contracts, and advising the executive team on a variety of strategic initiatives. Mark is admitted to practice before the United States Patent & Trademark Office, all California State Courts, and the United States District Courts for the Northern and Southern Districts of California.

For more information or to contact Mark, please visit his Firm Profile Page.

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Discuss this

There are currently 13 Comments comments. Join the discussion.

  1. Anon writer July 2, 2019 11:06 am

    The letter addresses Sen. Susan Collins from Maine as one of several “Gentlemen.”

  2. Eileen McDermott July 2, 2019 11:09 am

    It’s Rep. Doug Collins – GA.

  3. Anon writer July 2, 2019 12:10 pm

    Aha-thanks for the correction, apologies.

  4. ClauseEight July 2, 2019 12:50 pm

    I completely agree with your premise–we should avoid instances where the courts can misinterpret law and hurt inventors (especially independent inventors and small businesses who rely on our engine of innovation & investment). However… the changes to Section 100 are more of a clarifying definition than anything else. More definition should eliminate ambiguity and not create more of it. Clearly defining the boundaries of the patent system (as with these 100 amendments) should allow the courts to fully understand how to interpret the law as a whole. I think these changes will push us to an understanding more in line with the intent of the framers of the Constitution. Only change I see we need is to remove “in any field of technology.” Just because 100 hasn’t been used for invalidation doesn’t mean changes to the section won’t positively support the changes to 101 and help to eliminate the mess we’re in now.

    As for 112… Yeah, that should be removed.

  5. Pro Say July 2, 2019 1:53 pm

    Thanks Mark.

    Fact is; given today’s enhanced pleading requirements and the long-existing legal power of the Courts to quickly slap down any futher “100’s to 1,000’s of bare bones alleged ‘you’re infringing!’ bulk mailers of years past; there is absolutely no reason at all to disturb the well-settled 112(f).

    The last thing American innovation needs is for (proposed) 112(f) — or a new 100(k) — to become the next 101 morass.

    America simply CAN NOT afford yet another patentability scourge.

  6. Paul Morinville July 2, 2019 3:11 pm

    Mark, Thanks. Well said.

  7. Night Writer July 2, 2019 7:56 pm

    @4 ClauseEight > the changes to Section 100 are more of a clarifying definition than anything else.

    What? The changes to Section 100 are clearly an attempt to put a technical requirement into 101 so that we end up with a 101 that is similar to Europe. The changes to Section 100 will result in severely restricting subject matter eligibility for information processing.

  8. Pro Say July 2, 2019 8:55 pm

    Thanks again Mark.

    E-mailed letter just sent.

    With the same written letter to the committee members going out tomorrow.

  9. Jason Lee July 2, 2019 9:25 pm

    Silicon Valley knows it can not stop the fix going on to 101 that’s why they are spending millions to make sure 100 112 carve out a back door for them to continue to steal patents with out having to pay any licensing fees. Pharma will get their protection and small patent holders will be left out as Silicon Valley will buy their influence in order to continue their theft.

  10. Night Writer July 3, 2019 10:53 am

    @9 Jason Lee

    I think that is exactly right. Fix 101 and break 100 and 112. Probably figure they only need one of 100 or 112.

    What I can’t get over is how outrageous the proposals to change 100 and 112 are. They are obviously meant to cripple the patent system. And yet people get up and argue they would be good with a straight face.

  11. Anon July 3, 2019 1:10 pm

    Night Writer @ 10,

    Remarkably (or not), the people MOST vocal about wanting the new 100 and 112 are the same ones that saw no problem with the Court (re-scrivined) 101.

    Mr. Greg DeLassus was perhaps an exception, but note how vocal he has been FOR the changes in 112 (and then note his Pharma bias).

  12. Steve July 3, 2019 3:09 pm

    When is the deadline for submitting comments?

  13. Abraham Jobs July 7, 2019 7:46 pm

    @Jason Lee I agree with your post and would add Silicon Valley already have the majority in their pocket that sit on the “Subcommittee on Intellectual Property” headed by Congressman Thom Tillis (R).

    They will include a sweetener for them selves so they can continue to stonewall patents holders from collect on any capital on their IPs.

    I do feel in order to get real protection for your IP today you need to file for a patent not just in America but also China and Germany, its getting way to pricey for the average person to get any type of protection. America sure has flushed the patent market and the American dream down the crap shoot to serve the top tier companies. C’est la vie.

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