ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee

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.

Comments

[EG]

Hey Kevin,

I understand the effort by the ABA-IPL to render sanity out of the insanity that current 101 jurisprudence is. But this effort is DOA for at least the following reasons. First, it phrases this condition for patenting with the wrong emphasis-the invention or discovery should be patent-eligible if it falls within one of the statutory classes UNLESS it is merely a "law of nature," "natural phenomena," or "abstract idea." Second, the determination of what is patent-eligible should be based upon what is recited IN THE ENTIRE claim without stating what the claim is "directed to," without paraphrasing what it is believed the claim recites or is "directed to," and similar "gisting" that occurs in applying the nonsensical, broken, and non-statutory Mayo/Alice framework. Third, the "preemption" language is superfluous, redundant, confusing, unnecessary and counterproductive as that is already addressed by the "enablement"/"written requirement" of 35 USC 112(b)/112, first paragraph. There may be more issues with the ABA-IPL proposal but those are the "big three" that make this proposal unworkable and unacceptable.

[Martin Snyder]

Any attempt to essentially remove the power of judicial review / equitable discretion by statue is going to run up against a separation of powers problem, in the least. Certainly the idea of one being "entitled" to a patent is going to raise eyebrows.

In addition "All practical applications" are unknowable and therefore impossible to adjudicate.

Lastly, the "new" requirement for patentable subject matter is a Constitutional requirement for invention or discovery and will never, ever be excised from the patent law.

[Kevin E. Noonan]

Dear Martin: to clear up an easy misunderstanding, the proposal doesn't eliminate the novelty requirement, it limits it exclusively in Section 102 rather than as it is now, also contained in Section 101.

Agreed that the separation of powers is the biggest problem with all the proposals, insofar as the Court will always exercise plenary supervisory power over whether Congress exceeds its powers under Article I. A similar argument was made prior to inclusion of Section 103 in the 1952 Act. The goal is to write the law in a way that these concerns are not implicated.

And of course "all practical applications" is problematic - but "complete" preemption may be better stated as "undue" preemption, provided it can be properly defined.

Thanks for the comments.

[Paul Cole]

Even if the word "new" is removed from Section 101, it is arguably implicit in the words "invents or discovers". It is foreseeably difficult to see how removal of the novelty requirement from Section 101 could be made an attractive proposition to the legislative branch.

Compliance with the four eligible categories is a further issue. The danger is that the debate in the Supreme Court could simply be shifted from the judicial exclusions to statutory compliance, achieving essentially the same results as at present but on the basis of different judicial reasoning, and study of the four categories which has been neglected in recent years in favor of the judicial exclusions reveals that each of them carries ample judicial baggage.

Those who think otherwise are invited to re-read the Mayo decision and consider whether the claimed subject-matter fell as a matter of substance rather than mere outward appearance within the "process" category.

[Martin H Snyder]

While this whole subject turns on seemingly few words and their meanings, in fact it's an enormously complex set of interrelated problems that has led to the current jurisprudence.

These include:

- the advent of information inventions (i.e. new, useful, and non-obvious inventions that lack any physical structure)

- the Constitutional boundaries of patenting newly discovered scientific facts that are useful without new apparatus or technique (e.g. the presence of fetal DNA in maternal plasma)

- the runaway cost of patent litigation defense (to be merely accused of infringement means a certain, very substantial loss), thus weaponizing patents into instruments of economic destruction asymmetrically favoring patentees.

- The historic anomaly of "process" being relatively unbounded combining with information inventions to foster an explosive growth in the number of patents issues for overlapping subject matter (i.e. "do it on a computer" claims)

- the effect of information inventions on functional claiming statute and doctrine (i.e. the line between aspiration and realization becomes very fuzzy)

- the ubiquity of information processing methods altering concepts/standards of obviousness in combination patents

- the historic dysfunction of the political branches in dealing with complex problems, or any but the most pressing problems at all, leading to increased political decision making being directed to the Judiciary.

Against this background, the solution is not a simple redrafting of Section 101. There is no single solution, but I can think of two or three steps that would help immeasurably.

1) require process patents to have a construed result.

2) if the construed result is some item of information, predicate eligibility on the consumer of the information, not the nature of the information. If consumed by non-human actors, it would be eligible. If not, it would be non-eligible.

3) Include in the construction step a streamlined obviousness inquiry (in lieu of IPR via Article III courts) to identify if there is ANY invention in the claims. If there is, move on to a full 102/103/112 inquiry/trial.

4) Repeal AIA root and branch

5) Make no further legislative interventions until the above court procedures have had time to be adapt and evaluated.

[Paul Cole]

While I do not agree with all that Martin says, he is in my submission correct about the complexity of the problem, the need for a clear and understandable obviousness standard and the cost of litigation in the US (and also here in the UK).

The tendency of legislators is to write progressively over-complex laws, and the USPTO is a huge bureaucracy guided by the MPEP which is itself a document of fearsome length and complexity. When at the end of WWII Woodrow Wilson set out his 14 Points, the French president Clemenceau said: "God, himself, needed only 10."

Simplification and the adoption of a few legal principles on which all can agree would be a way forward. But optimism that it will be found is at present unjustified.