Bipartisan Group of Senators Asks Hirshfeld to Gather Info on Eligibility Law by Next Year

By Eileen McDermott
March 8, 2021

“The lack of clarity [on patent eligibility] has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries.”

patent eligibility letter - https://depositphotos.com/11492323/stock-photo-mail-dog.htmlSenators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) sent a letter on Friday to the Acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.

Hirshfeld became Acting Director upon former USPTO Director Andrei Iancu’s resignation in January. He was appointed to his second five-year term as USPTO Commissioner for Patents in July 2020.

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As a refresher, Tillis spent all of 2019 trying to reach agreement on reforms to Section 101/ patent eligibility law, but ultimately declared it “dead on arrival” without stakeholder consensus. “I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach,” Tillis told the Intellectual Property Owners Association. “If we’re going to get anything done on this issue, everyone will have to compromise.” The biggest roadblock to consensus was on changes to 35 U.S.C. 112(f). Some stakeholders who wanted a legislative fix for 35 U.S.C. 101 were concerned that the proposed amendment to 112 would simply move rejections and invalidity arguments from 101 to 112. As a result, Tillis’ focus moved from patent reform to copyright reform last year, which culminated in a draft plan to reform the Digital Millennium Copyright Act (DMCA) in December 2020.

In the letter, the senators expressed concern about the state of patent eligibility jurisprudence, which has resulted in “a lack of consistency and clarity” in patent eligibility law. They said that, in order for the United States to continue leading in technology sectors such as quantum computing, artificial intelligence, 5G, the internet of things, biopharmaceuticals, precision medicine, and life sciences, “we can no longer continue to ignore the fact that current eligibility jurisprudence has had a dramatic negative impact on investment, research, and innovation.” The letter continued:

The lack of clarity has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries.

The senators are specifically calling for data on how cases like Alice Corp. v. CLS Bank International and Mayo Collaborative Services Inc. v. Prometheus Laboratories Inc. have “adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.”

The deadline for Hirshfeld to submit a report is March 5, 2022, so it doesn’t seem likely there will be much congressional movement before that to address patent eligibility. But presumably, a targeted information gathering process will soon begin.

Brian Pomper, Executive Director of the Innovation Alliance, said of the letter: “These Senators are exactly right to warn about the lack of consistency and clarity in patent eligibility law. The status quo is undermining U.S. leadership in global innovation and needs to be addressed.”

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 22 Comments comments.

  1. anonymous March 8, 2021 4:51 pm

    The reams of testimony and days of hearings from 2019 were not enough? This is political cover for yet another year of stagnation, while 101 invalidations and uncertainty will continue for another year, unnecessarily. You know what needs to be done, but you lack the will to do that which is right.

    Justice delayed is justice denied.

  2. Pro Say March 8, 2021 9:25 pm

    +1 anonymous.

    Enough is enough. Stop kowtowing to Big Tech and pass a d.a.m.n. bill to restore patent eligibility to all areas of innovation.

    All areas.

  3. Paul Morinville March 8, 2021 10:36 pm

    There will be no legislative fix. Biden killed the work Congress was doing late last year to fix 101 when he took office. The only hope is that SCOTUS fixes the mess they created.

  4. TFCFM March 9, 2021 9:20 am

    Proponents of a broader eligibility standard would do well to propose and provide-meaningful-jurisprudential-support-for a narrower and more specific standard than “anything goes” (which has never before been the standard).

    It seems to me that no remotely-rational majority of Congressional representatives (never mind “in both houses”) will support an amended statute that grants exclusive rights for genuinely-abstract ideas, for natural phenomena, or for “any-future-invention-that-performs-this___-function.”

    One proposing a new standard ought to propose accordingly.

  5. Anon March 9, 2021 10:55 am

    I laugh at TFCFM’s mindless prattle.

    What those wanting ‘change” are asking for is nothing more than for the Supreme Court to remove the mess of its own creation.

    The standard is as the standard was: the actual words of Congress in the Act of 1952.

    Whatever “it” may be that “seems to you,” you would be wise to not treat your arse as your hat.

  6. concerned March 9, 2021 12:55 pm

    @4: “Anything goes” meaning it solved a long time problem and everyone is in agreement the problem was solved; but the USPTO and PTAB cannot agree as to why and how the application should be denied, just that the application needs to be denied. The preceding statement is the current patent jurisprudence. I am sure both groups will come up with the “final” rejection when they see it.

    I had a oven delivered yesterday. The delivery personnel used arm straps. I wished I had thought of that idea, however, I am sure that idea would just be the abstract idea of delivering appliances.

  7. Model 101 March 9, 2021 4:12 pm

    Rediculous!

    This is about ignoring everything so as to not reform 101.

    More crooks hardly working.

  8. TFCFM March 11, 2021 12:02 pm

    Anon@#5: “The standard is as the standard was: the actual words of Congress in the Act of 1952.

    The Funk Brothers (1948) and Morse (1953) were well established by the time Congress enacted the 1952 act (overturning or nullifying neither of those or similar cases).

    The triumvirate of more modern ‘exceptions-from-eligibility’ cases have been in force for decades (Benson in 1972, Flook in 1978, and Diehr in 1981), during which decades Congress has many times amended the patent statutes without overturning them.

    Congress surely HAS THE AUTHORITY to change the law to effectively nullify these cases if it chooses to do so. That does not remotely mean that your proposed “1952-Act-ignoring-Morse-Funk-Brothers-and-Similar-Cases” standard is anything but a figment of your wishful imagination.

  9. Anon March 11, 2021 1:57 pm

    Your view is off-base and colored by the kool-aid of retro-written history (and your penchant for thinking that the Supreme Court “must be right” in what they have done.

    They are not.

    What state did you take your attorney oath in?

  10. Jianqing Wu March 12, 2021 9:23 am

    I could urge Congress to cancel Section 101. Section101 prevents society from fixing environment, ecosystem and climate. Now, businesses must seek man-made to avoid patent uncertainty. If big tech starts seeking things from nature, future humans can survive on this planet.

  11. TFCFM March 12, 2021 9:55 am

    Anon@#9: “…your penchant for thinking that the Supreme Court “must be right…

    As more than one SC Justice has said in various forms over the years: “We are not final because we are infallible; instead, we are ‘infallible’ because we are final.

    In our democratic republic, the law of the land is the statutes enacted by our legislature(s), as interpreted by our courts. It has been such throughout the history of our republic and remains so now.

    EVEN when you, personally, dislike this or that interpretation.

    For over four decades, the US Congress has been well aware of how the courts have interpreted section 101, and have declined to alter the law, despite its unquestioned authority and ability to do so. Similarly, for over three-quarters of a century, the Congress has declined to overrule the eligibility case law that it also declined to overrule at the time the 1952 statute was enacted. It may or may not alter the statute now.

    None of these facts justify the childish name-calling and unprofessional hand-waving that you offer in place of a good reason to alter the statute in whatever unspecified way you think fit.

  12. Anon March 12, 2021 1:14 pm

    TFCFM,

    You did not answer my question as to the state in which you have taken your attorney oath in.

    Why is that?

    As to “interpret,” I would certainly hope that you know the difference between proper and improper application of the “interpret” aspect of Common Law, and when law writing of “Common Law” exceeds the limited authority of ANY particular branch of the government (as dictated by the Constitution).

  13. TFCFM March 15, 2021 9:30 am

    Anon@#12: “Why is that?

    Because, as I have told you before:

    1) My state(s) of registration are immaterial to the issue we are discussing. This is mere childish hand-waving on your part (to detract from your utter inability to intelligently counter facts and arguments I share).

    2) I choose not to publicly identify myself (or to provide meaningful hints) in this forum (among other reasons, so as not to potentially prejudice my clients and their legal positions)

    If you wished to appear remotely credible, you would address legal topics head on, rather than resorting to the intellectual equivalent of “yomamasofat” jokes as replies.

  14. Anon March 15, 2021 12:51 pm

    TFCFM,

    While you may have asserted such, as I have explained in response, your assertion is not true.

    I have seen a single instance (Massachusetts) in which the form of the State Oath varies from the point that I have put on the table.

    Your labeling of this as “childish” is itself childish.

    As to 2), I have ALSO defeated this deflection of yours, as I was previously explicit as this is NOT outing yourself. Providing your mere state in which you have taken your attorney’s oath does NOT “out you.” It is again childish for you to pretend otherwise.

    I am not the one that need be concerned with appearing remotely credible — as you for whatever reason refuse to engage on the point out to you.

  15. TFCFM March 16, 2021 11:59 am

    If you believe that operation of American federalism depends upon the identity of the state(s) in which I am registered to practice, please explain how.

    Otherwise, save us your hand-waving.

  16. Anon March 16, 2021 12:49 pm

    Nice strawman.

    Your accusation- like your attempted deflection – fails.

  17. Anon March 17, 2021 7:54 pm

    By the by TFCFM, you are aware that you have spent considerably MORE time and effort evading the simple question put to you than providing the simple answer?

    Of what harm (to you, or to anyone) would providing that answer entail?

    Instead, “the lady doth protest too much, methinks.”

    That you have now been called out on this multiple times is not – as you clamor – “handwaving” on anyone ELSE’S part.

    Surely you as an attorney can see this as plain as day, eh?

  18. TFCFM March 18, 2021 9:39 am

    If you can convince me that operation of American federalism depends upon the identity of the state(s) in which I am registered to practice, I will be pleased to answer your question.

  19. TFCFM March 18, 2021 9:41 am

    In our democratic republic, the law of the land is the statutes enacted by our legislature(s), as interpreted by our courts. It has been such throughout the history of our republic and remains so now — REGARDLESS of the state(s) in which one practitioner may (or may not, for childish-attempted-insulters) be registered to practice.

    If blindingly-obvious characterization is incorrect, please explain to us how.

  20. Anon March 18, 2021 8:12 pm

    My oh my – your “If you can convince me” is absolutely meaningless.

    That you go to such lengths to NOT answer is an answer.

    The point of this has nothing to do with your impression of hwat the law of the land is in our democratic republic.

    You AGAIN here ERR with the view of “interpreted by our courts” as if ALL forms of Common Law rest entirely on “interpretation” or that there are no such things as checks and balances OR that our very democratic republic is built on the basis of the government having limited powers.

    Your own “childish-attempted-insulters” attempted insults, notwithstanding, you have an easy choice to make, and have chosen NOT to share something (even after your REPEATED false protests have been disposed of).

    As I said – your NON answer is an answer, and one not very positive for you.

  21. TFCFM March 19, 2021 10:09 am

    Dodge. Weave. Dodge. Weave.

    Even if we presumed that I were not an attorney registered to practice in a US state, my statements would be equally accurate — your childish hand-waving notwithstanding.

  22. Anon March 24, 2021 10:57 am

    LOL – no seriously. Your accusations of “dodge” and “weave” are merely the things that you do.

    You have spent yet MORE time doing that very dodging and weaving instead of answering a simple question in a direct manner.

    Are you really THAT ‘tone-deaf’ to how your “answers” come across?