“More 101 reforms may well be needed, but most would agree we are better off today than we were a year ago because of the actions taken by the USPTO.”
As the year draws to a close, we reflect on what mattered most in the world of intellectual property during 2019. It was a particularly active year on IP issues, with important events in the courts, Congress, and agencies. Below we have highlighted a few of the most significant activities. Compare our list to yours and let us know what you think!
Administration and Congressional Consideration of Patent Subject Matter 101 Issues
One of the first things that the USPTO did this year – and one of the most important – was to issue revised guidance both for subject matter eligibility under 35 U.S.C. § 101 and the application of 35 U.S.C. § 112 to computer-implemented inventions. The guidance went into effect January 7, 2019—a “new year’s present” for all of us.? The agency’s action, according to USPTO Director Iancu, was designed to improve the clarity, consistency, and predictability of Section 101 and 112 actions throughout the USPTO. The agency also provided training throughout the year to examiners and administrative patent judges to help ensure the guidance was being properly and consistently administered.
Then, in May, Sens. Tillis (R-NC) and Coons (D-DE), alongside Reps. Collins (R-GA), Johnson (D-GA), and Stivers (R-OH) released a bipartisan, bicameral draft bill that would not only make further reforms to Section 101 of the Patent Act, but, unlike agency guidance, would enshrine them into law.
The bill made the following specific changes:
- Removed “new” from section 101
- Added 101(b) to provide that eligibility determinations are to be based on the claim as a whole
- Added section 100(k) to define the usefulness requirement
- Amended section 112(f)
Sens. Tillis and Coons held several hearings and closed-door roundtables with stakeholders to solicit feedback on potential reform. Technology, pharmaceutical and biotechnology industry representatives lauded the proposed changes as a way to boost innovation and eliminate business uncertainty. On the other hand, other groups have asked the lawmakers to maintain the status quo.
The guidance issued by the USPTO and the time that Congress spent considering further 101 reforms reflected the unhappy state of 101 jurisprudence at the end of last year. More 101 reforms may well be needed, but most would agree we are better off today than we were a year ago because of the actions taken by the USPTO. These issues are very important to the intellectual property community. As a consequence, we believe that the agency’s actions relating thereto, and Congress’s’ expression of interest therein, were the most important intellectual property development in 2019.
USPTO Hires New CIO and Continues Modernization of IT Systems
In February of this year, the USPTO hired Jamie Holcombe as its new Chief Information Officer (CIO). The job had been held in acting capacity by David Chiles following the departure of John Owens in October 2017.
The CIO role is a vitally important one, particularly in an organization like the USPTO, where the work of its examiners and applicants is increasingly digital. Thus far, Holcombe has shown a strong understanding of this transformation and has articulated a clear plan to stabilize and modernize the IT systems. He has also demonstrated strong management and leadership skills and an absolute commitment to mission success. We hope that he is given the necessary funding and support to realize his plan.
Senate Judiciary IP Subcommittee is Reinstated
The beginning of the 116th Congress brought the reinstatement of the Senate Judiciary Subcommittee on Intellectual Property, which had been disbanded in 2007. The Subcommittee is led by Chairman Thom Tillis (R-NC) and Ranking Member Chris Coons (D-DE), two lawmakers with a clear understanding of both the vital importance of a robust IP system and the unique challenges facing stakeholders.
To their credit, Sens. Tillis and Coons wasted no time getting to work. In just a year they have held 12 congressional hearings on IP issues, such as patent subject matter eligibility, as referenced above, and sent 10 letters to various agency heads. The quantity and variety of the Senate Subcommittee actions sent a strong message that IP protection is of great important to the U.S. economy and U.S. workers.
IP Legislation Moves through Congress
In a further indication that intellectual property remains one of the few areas where legislation can advance through Congress, there appears to be bipartisan recognition of the importance of some of the issues and the need for reform, or at least clarification. Thus, this past May, a bipartisan group of lawmakers, led by Reps. Hakeem Jeffries (D-NY) and Doug Collins (R-GA) in the House and Sens. John Kennedy (R-LA) and Dick Durbin (D-IL) in the Senate, introduced the Copyright Alternative in Small Claims Enforcement (CASE) Act of 2019. The bill would create a Copyright Claims Board, within the U.S. Copyright Office, to decide small copyright disputes. Damages awarded by the board are capped at $30,000 total and $15,000 per infringement.
The bill provides individual and other creators—authors, songwriters, illustrators, photographers—a practical means of protecting their copyright interests, as federal court litigation is often financially prohibitive for such copyright owners.
The CASE Act passed the House overwhelmingly in October with a 410-6 vote, and was voice voted out of the Senate Judiciary Committee in July. Although it is unlikely that the bill will receive a Senate floor vote before 2020, the process, to date, is an encouraging sign that Congress can still legislate in a bipartisan manner to improve our IP system.
Increased Scrutiny of Big Tech and Section 230
This past year we saw Congress begin heavily scrutinizing large tech companies such as Facebook, Google and Twitter. Much of the focus of Congress’ inquiries was on Section 230 of the Communications Decency Act (CDA), a law that grants broad immunity to internet platforms for the content that users publish on their sites. Many lawmakers want to reform the current law, believing that it has allowed internet companies to profit from illegal, stolen and misleading content.
Not surprisingly, the tech community has pushed back hard against this effort, alleging that changes to Section 230 would destroy free speech on the internet. The platforms also claim they lack the technology to adequately review all the content posted on their sites.
While no changes to the law occurred in 2019, there is certainly bipartisan momentum in Congress to do something in this space soon.
Onward to 2020
We undoubtedly saw more action on intellectual property issues this year than in 2018, and 2020 may very well eclipse 2019. It is heartening to see that the U.S. lawmakers, agencies, and courts are still thinking critically about how to improve our IP system. Hopefully, their efforts in 2020 will result in a more efficient IP system that fosters greater innovation and consumer satisfaction.
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