By Kevin E. Noonan --
The Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent today to continuing U.S. Patent and Trademark Office Director Michelle Lee a letter containing its proposal for revising 35 U.S.C. § 10i in light of recent U.S. Supreme Court decisions interpreting (and seriously revising) the scope of subject matter eligibility. The proposal, set out as a resolution, contains the following revisions to the statute:
RESOLVED, that the American Bar Association Section of Intellectual Property Law supports, in principle, amendment of 35 U.S.C. § 101 to clarify that useful inventions as defined by each and every limitation of the claims of a patent satisfy the patent eligibility requirements of section 101 so long as the claims do not preempt the use by others of all practical applications of laws of nature, natural phenomena or abstract ideas, and to clarify that the determination of patent eligibility under Section 101 is independent of patentability under other sections of the patent statute.
FURTHER RESOLVED, the ABA-IPL Section supports, in principle, replacing in its entirety the current statutory language of 35 U.S.C. § 101 with language substantively consistent with the following:
101. Conditions for patentability: eligible subject matter.
(a) Eligible Subject Matter.- Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, shall be entitled to obtain a patent on such invention or discovery, absent a finding that one or more conditions or requirements under this title have not been met.
(b) Exception.- A claim for a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may be denied eligibility under this section 101 on the ground that the scope of the exclusive rights under such a claim would preempt the use by others of all practical applications of a law of nature, natural phenomenon, or abstract idea. Patent eligibility under this section shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored. Eligibility under this section 101 shall not be negated based on considerations of patentability as defined in Sections 102, 103 and 112, including whether the claims in whole or in part define an inventive concept.
This legislative proposal was approved by the Section Council on March 7, 2017. This effort is part of the response to the Supreme Court's recent subject matter eligibility jurisprudence by major patent bar groups (see "What to Do about Section 101? IPO Provides Its Answer" and "Proposed Amendments to Patent Eligible Subject Matter under 35 U.S.C. § 101"). Like the IPO's proposal, the ABA-IPL removes the novelty requirement from Section 101, and strengthens the section by including that an applicant is "entitled" to a patent (rather than may be granted one) provided that the other requirements of Title 35 are met. The ABA-IPL Section's proposal also includes express statutory exceptions to patentability intended to codify (and restrict the scope) of the "judicial exceptions" that the Court has relied upon in its jurisprudence. The proposal explicitly ties those exceptions to instances where a law of nature, natural phenomenon, or abstract idea would "preempt the use by others of all practical applications" thereof, and excludes from the exceptions instances where the subject matter of the claimed invention is a practical application of a law of nature, natural phenomenon, or abstract idea. The proposed revised statute also encompasses the requirement enunciated by the Court in Diamond v. Diehr that claims must be considered as a whole in making an eligibility determination, and attempts to restore the traditional boundaries between Section 101 and the other statutory sections.
Like the IPO proposal, the ABA-IPL Section's suggested revised statute does not attempt to abrogate outrightly Supreme Court precedent. Unlike the earlier proposal, this one is supported by a short letter by Section Head Donna P. Suchy, rather than a full explication of the rationale behind it (that rationale and the Section's concerns are contained in its comments in response to the Office's invitation published in the Federal Register at 81 Fed. Reg. 71485, PTO-P-2016-0041, October 17, 2016). In this recent letter, the Section reiterates its concerns that the Supreme Court has "injected ambiguity" into the determination of subject matter eligibility, by injecting principles that in the application of the law beforehand had been limited to questions of novelty and obviousness. In addition, the Court has seemingly countenanced ignoring claim limitations and has turned the "gateway function" of Section 101 into a test of patentability better suited to the other statutory sections.
The letter identifies as the Court's principal concern the possibility of undue preemption of a natural law, phenomenon of nature, or abstract ideas, but asserts that the way the Court has converted those concerns into a test for patent eligibility in Mayo v. Prometheus and Alice v. CLS Bank is where the Court has gone astray. This has caused lower courts to "lose sight of the fundamental preemption concern that has driven patent eligibility jurisprudence" as exemplified by the decisions in Ariosa v. Sequenom according to the Section's letter, where "the Federal Circuit said the Supreme Court's newly minted eligibility test must be applied so aggressively as to require lower courts to hold that 'groundbreaking, innovative, or even brilliant discoveries' can be excluded from patent protection"; this the Federal Circuit did even while at the same time recognizing the Supreme Court's concerns about preemption and "expressly rejecting applying preemption in rendering its decision."
The Section's proposal, in contrast, expressly recognizes the Court's preemption concerns and its "proper role" in "establishing a patent eligibility gateway consistent with" those concerns. The letter further states that its proposal "at least substantially mitigates if not resolves newly injected ambiguity and confusion into the eligibility determination caused by the use of factors that are relevant only to novelty, obviousness, and the requirements of particularity in claiming an invention."
The Section claims nothing other than this being "an important first step" in providing "a politically palatable solution to the unworkable and detrimental state of current 101 jurisprudence." Time, of course, will tell how "politically palatable" addressing Section 101 turns out to be. But the Section has shouldered its part of the responsibility for attempting to do more than throw up it hands and instead rolled up its sleeves and produced a concrete proposal for policymakers' due consideration.
The author was a member of the task force involved in developing this proposal.