Posts Tagged: "Patent Reform"

First Senate Hearing on 101 Underscores That ‘There’s More Work to Be Done’

The first of three scheduled hearings in which the Senate IP Subcommittee will hear testimony from a total of 45 witnesses on the subject of patent eligibility law raised many questions. While some read the proposed draft bill released by Congress last month as clearly overturning AMP v. Myriad, for example, Senator Chris Coons (D-DE), Ranking Member of the Senate IP Subcommittee, said today that was not his intention. In his opening statement, Coons pushed back against an article published on Monday by The Washington Post, which indicated that the proposed draft bill to revise Section 101 would enable the patenting of genes. Coons called the article “significantly misleading” and noted that “our proposal would not change the law to allow a company to patent a gene as it exists in the human body. I believe I speak for the Chairman and myself when I say we do not intend to overrule that holding of the 2013 Myriad decision.” The concerns leading to the Washington Post article arose in recent days, after the American Civil Liberties Union (ACLU) released a statement and held a phone briefing for Congressional staffers claiming that the proposed draft bill would enable the patenting of genes. Sherry Knowles, Principal of Knowles Intellectual Property Strategies and one of the witnesses at today’s hearing, penned a rebuttal of the ACLU’s position that IPWatchdog published on Monday. Knowles spoke in the second panel of today’s hearing and said she hopes the proposed bill would in fact overturn the Myriad decision because “there’s been a dead stop in research in the United States on isolated natural products. The highest public interest is life itself and that has to be the goal of this statute.”

Todd Dickinson: SCOTUS Has Denied 42 Section 101 Petitions Since Alice, So It’s Up to Congress

The first of three hearings on patent eligibility reform is now underway; Q. Todd Dickinson, former USPTO Director and Senior Partner at Polsinelli, was one of the first to testify, and in part emphasized to the Senate IP Subcommittee that the courts have shirked their duty to address this issue, so Congress must. Dickinson provided the Subcommittee a list of the 42 cases that have been denied cert by the Supreme Court since Alice and said that the current situation”encourages picking winners and losers” and actually pushes companies and inventors towards trade secrets.

Sherry Knowles Responds to ACLU’s Urgent Phone Briefing and Letter Opposing Reform to Section 101

This morning, the American Civil Liberties Union (ACLU), which will be represented in Wednesday’s hearing on Section 101 reform by Senior Legislative Counsel Kate Ruane, announced an urgent phone briefing for members of Congress and staff to address the contention that the “Proposed Patent Bill Would Jeopardize Health Care and Harm Medical Research.” The phone briefing, which all interested stakeholders should join, takes place today at 2:30 pm EST and will be jointly held by representatives from the ACLU, the Association for Molecular Pathology, a breast cancer survivor and patient, My Gene Counsel, and Invitae. Anyone who would like to listen should dial in to the number provided here. Below, Sherry Knowles, a well-known patent attorney, policy expert and also a breast cancer survivor, rebuts the arguments made in both the ACLU’s briefing announcement and associated letter to Congress on this topic.

SAP Files Brief in InvestPic’s SCOTUS Appeal of ‘Physical Realm’ Test for Patent Eligibility

On May 15, SAP America, Inc. filed a respondent’s brief with the Supreme Court in InvestPic, LLC v. SAP America Inc., a case in which InvestPic’s patent claims covering systems and methods for performing statistical analyses of investment information were invalidated under 35 U.S.C. § 101. Petitioner InvestPic is asking the nation’s highest court to determine whether the “physical realm” test for patent eligibility under Section 101 that the Court of Appeals for the Federal Circuit applied contravenes both the Patent Act and SCOTUS precedent. SAS’ brief contends in response that the mentions of “physical realm” are scant in the case record and that the present case provides a “textbook application” of Supreme Court precedent on claims involving mathematical equations.

The One Word that Will Help Restore the U.S. Patent System

Based on the age of many of us in the room, President Reagan was probably the first president many of us remember. And I mention this because we need another President Reagan—another person like that, who sees the power of the patent system. Upon taking Office, President Reagan told the then leaders at the patent office that the backlog of unexamined patent applications was unacceptable and he wanted it brought down to 18 months in his first term. The leaders at the patent office told him that that was simply not possible. That’s how bad the backlog was then. And then President Reagan and his advisors asked whether it would be possible to reduce the backlog to an average pendency of 18 months within two terms, assuming he would be given two terms. And they said, “yes, we think we can do that within two terms.”  And they didn’t quite get it done, but they got really, really close. They got to around 18.2 or 18.3 months average pendency by the end of President Reagan’s second term. And it was because President Reagan invested in the patent office.

The Lineup: Who We’ll Hear from in the First Two Senate Hearings on Section 101 Reform

To kick off the month in which Alice v. CLS Bank will turn five, the Senate Judiciary Committee’s Subcommittee on Intellectual Property will hold its first two hearings on “The State of Patent Eligibility in America.” The hearings are scheduled for Tuesday, June 4 and Wednesday June 5, both at 2:30 PM in the Dirksen Senate Office Building, and the Subcommittee has now published the rosters for both hearings. As mentioned in a Senate press release last week, there will be three hearings held in total, on June 4, 5 and 11, featuring three panels of five witnesses each, for a total of 45 witnesses over three days. Overall, it is quite balanced between those who will argue for and against reform. This is quite a change in and of itself; congressional hearings on patent legislation over the past decade have largely favored those arguing against pro-patent reforms. IPWatchdog will cover these hearings, and several of the witnesses testifying next week — Chief Judge Paul Michel, Sherry Knowles and Phil Johnson —will be speaking later in the month at our Patent Masters™ Symposium titled Alice Five Years Later. 

Congress’ Section 101 Fix Would Create a 112(f) Problem

Senators Coons and Tillis and a group of Representatives recently proposed an admirable piece of legislation to amend the Patent Act to abrogate Supreme Court Section 101 cases on patent eligible subject matter. I like that they propose a fix to Section 101. So far, so good. Alice was an interpretation of Mayo, which was an interpretation of Flook, which was an interpretation of Benson, which was supposed to be an interpretation of what Congress meant by the short and crisp statement of Section 101 of the Patent Act. But just as a photocopy of a photocopy of a photocopy gets more distorted with each generation, so did Supreme Court rulings. The judicially-invented residue left behind not only errs by failing to capture the plain and unambiguous scope of Section 101 and patent-eligible subject matter, but also catastrophically undermines and invalidates important patents that, until then, protected breakthrough inventions. Congress is right to step in. Inventors of breakthroughs need protections to form companies and create new jobs. What the senators propose is not perfect, but at least as far as Section 101 is concerned, will restore fairness to many future outcomes.But there’s an extra bit. To call it alarming would be an understatement. That extra bit would sharply and sweepingly limit the property rights of all technology patents. The proposal (as currently drafted) amends Section 112 to require any patent claim limitation that names any function “without the recital of a structure, material or act in support thereof” to be interpreted as limited to the structural embodiment in the patent specification that practices that function (plus equivalents).

Other Barks & Bites, Friday May 24: Coons Requests Info on Alexa Privacy, Congress Pushes 101 Reform, and Qualcomm Will Appeal Its Loss to the FTC

This week in Other Barks & Bites: Chinese state media pushes back on the United States’ claims of intellectual property theft; a bipartisan coalition from both houses of Congress releases a draft proposal of Section 101 patent law reform; Senator Coons seeks more information on Amazon’s privacy practices for Alexa devices; the city of Baltimore files a lawsuit over a scheme to delay market entry of a generic to the Zytiga prostate cancer treatment; the USITC institutes a patent infringement investigation of Comcast after several complaints from Rovi; USPTO Deputy Director Peters files a petition brief in a Supreme Court case over USPTO personnel expenses incurred during litigation instigated by patent applicants; and Qualcomm plans to appeal adverse ruling in Northern California antitrust case brought by the FTC.

Draft Text of Proposed New Section 101 Reflects Patent Owner Input

A group of Senators and Representatives has just released the draft text of a bipartisan, bicameral proposal to reform Section 101 of the Patent Act. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property; Representative Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee; Hank Johnson (D-GA-4), Chairman of the House Judiciary Subcommittee on Intellectual Property and the Courts; and Steve Stivers (R-OH-15) sent the draft text via press release today. The stated goal of releasing the draft is to solicit feedback—there will be additional stakeholder feedback and Senate hearings, according to the press release.Senate hearings on the topic will be held on June 4, 5 and 11 featuring three panels of five witnesses each, for a total of 45 witnesses over three days. The draft text explicitly states that “the provisions of section 101 shall be construed in favor of eligibility.”

Legislative Recommendation for the SUCCESS Act: Recognize the Inventor

Pursuant to the 2018 SUCCESS Act, Congress directed the USPTO to submit to it a report on the results of a study that provides legislative recommendations for how to increase the number of women, minorities, and veterans who apply for and obtain patents. To help gather information as part of its study, the USPTO opened its doors for public comment on Wednesday, May 8, 2019, in one of three scheduled hearings. Five inventors spoke at this hearing. I was honored to be one of them. Patricia Duran spoke first, providing testimony in Spanish while I read the English translation. Duran expressed appreciation for the SUCCESS Act’s intent, but quickly set the tone with this question: “What good is a patent if one cannot feasibly defend it?” She added that “women, minorities, and veterans all reside in the same category with other independent inventors, and this class—the independent inventors—is the true underrepresented class.” She was not alone. Three other inventors who provided oral testimony stated that all independent inventors are underrepresented in today’s patent system, which I found interesting, given that they all belonged to the classes at issue: women, minorities, and/or veterans.

House Drug Pricing Hearing Goes Off Script

Most Congressional hearings are morality plays designed to reach a predetermined outcome. It wasn’t hard to predict how the second hearing on drug pricing by the House Committee on Oversight and Reform was supposed to go. If the title, “HIV Prevention Drug: Billions in Corporate Profits after Millions in Taxpayer Investments” wasn’t enough of a clue,  when Chairman  Elijah Cummings (D-MD) said it was because of the “phenomenal leadership” of freshman Rep. Alexandria Ocasio-Cortez (D-NY)  that the hearing was being held, any doubts evaporated. In an extraordinary gesture of deference for a new Member of Congress, Rep. Ocasio-Cortez was recognized for an opening statement before senior members of the committee. However, because of two differences in this hearing from its predecessor things didn’t quite go as planned. This time, the Committee invited both sides to appear, not just the critics; and one member dared to challenge its underlying premise, leading to an electrifying exchange with the Chairman. We’ll examine that shortly.

Affordable Prescriptions for Patients Act Would Allow FTC to Prosecute Pharma Patent Thickets, Product Hopping

On Thursday, May 9, the Affordable Prescriptions for Patients (APP) Act was introduced into the U.S. Senate by Senators John Cornyn (R-TX) and Richard Blumenthal (D-CT). If passed by Congress and signed into law, the bill would modify the Federal Trade Commission (FTC) Act to give the FTC additional antitrust authority to challenge the anticompetitive nature of certain actions by pharmaceutical patent owners in the service of providing more consumer access to generic and biosimilar drugs.

Jamie Love Responds to Criticism of Knowledge Ecology International Letter

On May 12, Frederick Reinhart published an article titled “Knowledge Ecology International Letter Misleads on March-In Rights.” Reinhart is a past president of the Association of University Technology Managers (AUTM), and his views echo those expressed by many in the university technology transfer field, including a frustration that not everyone acknowledges and appreciates the considerable investments and risks undertaken by the for-profit companies that license patents to inventions funded by the federal government. Knowledge Ecology International (KEI) recognizes the importance of the private sector in bringing therapies to the market, even when federal funding of R&D has played a role, and also that robust returns on those investments have a positive impact on innovation.

Urge the Drafters of the New Section 101 to Support Inventor-Friendly Reform

Senators and Representatives Coons, Tillis, Collins, Johnson, and Stivers recently announced in a press release a proposed framework to fix patent eligibility law in the United States. If written as proposed in the draft framework, section 101 may do harm to the patent system. The senators and representatives are now soliciting feedback on the draft framework. They are likely to take additional action on the framework as soon as early this week. Please send the following text with any of your edits to

Independent Inventors to USPTO: We Are All Underrepresented in This Patent System

On Wednesday, the USPTO held the first of three scheduled hearings prompted by the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act, which requires the USPTO Director to provide Congress with a report on publicly available patent data on women, minorities, and veterans, and to provide recommendations on how to promote their participation in the patent system. The hearing featured emotional testimony from five inventors, one of whom has recently joined Debtors Anonymous as a result of her patent being invalidated in the Southern District of New York. The SUCCESS Act was signed into law by President Trump on October 31, 2018 and gave the USPTO a one-year period to study representation of women, minorities, and veterans groups in patents. The Office released a report in February which showed that the number of women named as inventors had not been increasing at the same rate as the number of women who were now in STEM professions. Deputy USPTO Director Laura Peter said at the hearing on Wednesday that the Office is seeking input from industry, lawyers, and academics at the public forums, the next two of which are scheduled in Detroit on May 16 and San Jose on June 3. “We’re looking for concrete ideas and action plans to increase the numbers of these groups applying,” Peter said, before explaining that she would be unable to stay for the remainder of the hearing.