By Kevin E. Noonan --
In the aftermath of the Supreme Court's decision not to grant certiorari in Sequenom v. Ariosa (and in some quarters, considerably before that), many have voiced the opinion that only Congress can resolve the acknowledged uncertainty that recent Supreme Court decisions have created in the law of patent subject matter eligibility. While many groups (such as the AIPLA and ABA-IP law section) have been said to be working on their own legislative proposals, the Intellectual Property Owners this week released theirs (see "Proposed Amendments to Patent Eligible Subject Matter under 35 U.S.C. § 101"). It proposes the following amendments to the statute (with strikethrough indicating text to be deleted and underlining identifying new language):
101 Inventions patentable.
101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto, shall be entitled to thereof, may obtain a patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Title of this title.
101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.
101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention's inventive concept.
This effort avoids any attempt at outright abrogation of Supreme Court precedent (likely a fool's errand in any case) in favor of codifying the IPO's understanding of the Court's intentions (which clearly could not have been to hamstring if not abolish vast swaths of American industry). The IPO's approach is similar to the approach Giles Sutherland Rich and PJ Federico took almost two generations ago in codifying the Court's inchoate "inventiveness" standard into the modern concept of obviousness. Thus, in proposed Section 101(b), the proposed revised statute expressly defines what have been judicially created exceptions based on Supreme Court law. This section posits that claims must be considered as a whole (as required under Diamond v. Diehr) and that their interpretation be bounded by the understanding of one having ordinary skill in the art (echoing Section 103 in this regard). Rather than merely then reciting the judicial exceptions ("abstract ideas, laws of nature and natural phenomena"), IPO's suggested language binds these concepts up into one: that "the invention existed independent of and prior to any human activity, or exists solely in the human mind." This phrasing keeps some of the novelty aspects in the revised statute that may have otherwise been banished by removing "new" from the preamble and is reminiscent of (but neither as elegant nor nuanced) as the language from Diamond v. Chakrabarty, that the invention be the product of human ingenuity. It also risks some degree of misinterpretation should all natural products be considered to have existed "independent of and prior to" human activity; it is possible that the drafters believed this risk to be mitigated by proper claim drafting, wherein an "isolated" natural product would pass statutory muster provided that the claim is construed as a whole. In like manner the proscription that the invention not exists "solely in the human mind" might cabin ineligibility of computer and like inventions to those capable of existing in the human mind.
The proposal comes closest to a Congressional "we really mean it this time" in proposed Section 101(c), where the drafters have tried to restore the doctrinal distinctions between Section 101 and the other statutory requirements of patentability. It also owes inspiration from Section 103 ("Patentability shall not be negatived by the manner in which the invention was made.") and contains the only direct rebuke of Supreme Court language by excluding considerations of "inventive concept" from the eligibility calculus.
The election of Donald Trump as the 45th President has thrown into a cocked hat any expectations regarding what Congress may be willing to consider. Amending the patent statute, particularly on fundamental matters like eligibility, could be a Pandora's box of goodies every species of political interest will want to exploit for their own purposes. But IPO (and the other groups) should be applauded for not just throwing up their hands in despair. In the current political climate perhaps anything is possible.