“Congress should reform § 101 and it should not be diverted by misleading policy rhetoric or mistaken statements about the patent laws.”
Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation.
The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars. The authors continued:
First, pursuant to the constitutional authorization to Congress to enact patent laws “to promote the Progress in . . . the useful Arts,” the patent system secures an exclusive right only in new products, processes, and compositions of matter that constitute the “useful Arts.” Thus, it is a longstanding and fundamental requirement in the patent statutes that only inventions or discoveries falling within the statutory categories in § 101—and in its predecessor statutes dating back to the first Patent Act of 1790—are eligible for patent protection.
The proposed legislative reform to § 101 does not alter this requirement.
The letter further addressed the ACLU’s contention that “the draft legislation would ‘prevent the discovery of novel treatments for diseases’ and would cause ‘harms to innovation and useful research’ in diagnostic tests.” Such claims are not supported by empirical evidence, said the letter, citing studies that showed patents had no effect on follow-on innovation due to the disclosure function of the patent system, which allows for open access to data. Additionally, because of companies’ efforts to commercialize inventions like genetic testing via patents, insurance providers began covering such tests to the ultimate benefit of patients.
Finally, the letter reiterated that human genes simply cannot be patented, as the entire sequence of human genes has been public since the turn of this century—an argument that has been upheld by the Federal Circuit in cases like In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). “The proposed reform of § 101 does nothing to alter these facts of science or law,” said the letter. It concluded by underscoring the harms to U.S. innovation under the current state of the law:
Unfortunately, U.S. innovators, especially in the high-tech and biopharmaceutical sectors, are suffering under extreme uncertainty about how patent examiners or judges will apply the Alice-Mayo framework that was recently created by the Supreme Court. With high rates of rejections of patent applications at the U.S. Patent & Trademark Office and high rates of invalidations of patents by courts, the only certainty that does exist is that the U.S. no longer secures the fruits of inventive labors with reliable and effective patent rights. This represents a fundamental change in the incentives the U.S. has provided to inventors for over two centuries, as its “gold standard” patent system closes its doors to twenty-first-century innovation in the vital high-tech and biopharmaceutical fields. Congress should reform § 101 and it should not be diverted by misleading policy rhetoric or mistaken statements about the patent laws.
Along with Michel, Rader, Dickinson and Kappos, the letter was signed by professors including Adam Mossoff of Antonin Scalia Law School George Mason University; Jeffrey Lefstin of UC Hastings College of Law; Hugh Hansen of Fordham University School of Law; Kevin Noonan of DePaul University College of Law; and many other distinguished professors of law.
Movement on the bill to reform Section 101 has reportedly been delayed until sometime in August, possibly due to disagreement on the language of the research exemption to avoid preempting fundamental research.
Image Source: Deposit Photos
Image ID: 8323866