AIPLA Proposes Legislative Changes to 35 U.S.C. § 101

By Kevin E. Noonan --

Like the Intellectual Property Owners (see "What to Do about Section 101? IPO Provides Its Answer") and the IP Law Section of the American Bar Association (see "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee") have done earlier this year, the American Intellectual Property Lawyers Association (AIPLA) has announced its proposal to amend Section 101 of the Patent Act to adapt, revise, and correct how the law has been changed by a series of U.S. Supreme Court cases of recent vintage (and a certain degree of infamy).  The AIPLA's proposal is as follows:

35 U.S.C. § 101—Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain shall be entitled to a patent therefor, subject only to the conditions and requirements of set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard 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 whether the claimed invention includes an inventive concept.

Like the earlier proposals, the AIPLA's proposed revision establishes an affirmative right ("shall be entitled to") rather than merely the possibility ("may obtain") to a patent should the statutory requirements be met; this may merely reflect the embattled state of patenting that members of the AIPLA perceive in the face of persistent criticism of patents from many sources.

The second and new subparagraph (b) reflects the desire to cabin by statutory specificity what the implicit judicial exceptions involve, here either things that can be accomplished by solely mental steps or that are found in nature absent the "hand of man" (which, no doubt, can be supplied in ways that would vindicate Justice Breyer's apprehension about misapplication of the draftman's art).

Finally, new subparagraph (c) is directed to an attempt to recreate the doctrinal wall between patent eligibility under Section 101 and patentability under the substantive statutory sections (§§ 102, 103, and 112).

The AIPLA's proposal is embedded in an eighteen page "position paper" reviewing the historical and legislative provenance of patent eligibility and how the Supreme Court has "distorted" the inquiry (and its own precedent, e.g., Diamond v. Diehr) to impose its own views of what subject matter is beyond Congress's Article I power to grant a patent.  The document also sets forth evidence of the uncertainty that these decisions have engendered and how its proposal is intended to rectify the situation.  Specifically:

The Legislative Proposal is intended to eliminate the current two-part test for eligibility.  It introduces an objective and evidence-based approach to the limited question of eligibility, and commits any policy concerns about overbreadth in patent claims to the conditions of patentability.  In particular, the Legislative Proposal recognizes that concerns for the existence of a so-called "inventive concept" were eliminated with the creation of the nonobviousness requirement in Section 103 by the 1952 Patent Act.  In sum, the Legislative Proposal is intended to provide a clear test that will result in appropriately broad eligibility and that will minimize the uncertainty and unpredictability discouraging investment in research and development.

The proposal and supporting document is yet another example of dedicated patent professionals addressing what is widely viewed as an error in how patent eligibility is being applied in the USPTO and the courts (see Judge Linn's "concurrence" in Ariosa v. Sequenom and Judge Lourie's and Judge Dyk's (joined by Judge Moore) concurrences and Judge Newman's dissent in the Federal Circuit's denial of Sequenom's petition for rehearing en banc).  We will all have to see what good it does.

Comments

[EG]

Hey Kevin,

Nice write up on this proposal by the AIPLA on revising 35 USC § 101-I hope it gets traction in Congress. I particularly like the fact that it makes no mention of "abstract idea" being relevant to patent-eligibility. I guess that AIPLA has decided that if SCOTUS won't define what this term means (i.e., per Alice), than perhaps it shouldn't be part of the patent-eligibility equation in 35 USC § 101 at all.

[Donavon Favre]

I would say, "is known to exist in nature". That stupid rule prevented GE from getting a patent on the diamond it invented.

[Some Random Guy]

If I can correlate A with B, is that patentable? Would that be a process that can be performed "solely in the human mind?" I'm thinking of a Mayo v. Prometheus situation.

[Paul Cole]

At first sight a very useful and workable proposal It deserves to gain traction.

[Kevin E. Noonan]

"or can be performed solely in the human mind" would cover a claim limited to the correlation. A claim that further recites ways of detecting that correlation, not otherwise known in the prior art, might (and I emphasize might) be a different story.

[skeptical]

This comment from SRG reminds me of the differences inherent in discussions of math, applied math (aka engineering), and Math(S) - the philosophical extension of both math and applied math.

And it also reminds me that the focus is obscured just a bit with the thrust of the question.

Patents protect utility.

A thought - ON ITS OWN - does not have the utility that patents seek to protect. If there is an implied attempt to indicate that patents "cover" these things known as purely mental steps, then that attempt is not an attempt at clarity, but rather, it is an attempt at obfuscation. It is a moving of goalposts from what a claim may be to a claim GEARED ONLY to a "mental steps" ideological framework.

The "solely" aspect is meant to reinforce a concept already present in patent law, but that has been the focal point of a renewed (some may say "Zombie") attack based on that decrepit mental steps theory.

As other patent blogs have noted, and as one certain patent blog owner has even coined a phrase describing the situation, there is a very real difference between any claim - taken as a whole - that exists SOLELY in the mind, a claim that is written (painstakingly) entirely in "objective physical structure terms" and a claim that exists in a Vast Middle Ground, with ELEMENTS of structure, perhaps mental steps, and other PURELY OPTIONAL claim formatting.

The patent system has long been under attack by those who would see the merely optional claim form of "objective physical structure" NOT be an option.

As might be expected, this attack circles around the single most accessible form of innovation in the world: software.

However, it should be kept sharply in mind, that as long as one is at least in the Vast Middle Ground, one is NOT in the "entirely in the mind" zone that this new rendition of 101 is meant to emphasize.

To that end, Dr. Noonan, your comment of " A claim that further recites ways of detecting that correlation, not otherwise known in the prior art, might (and I emphasize might) be a different story." is NOT correct as to what the aim of this legal change is.

You may be correct with that comment as it may apply (or not apply, depending on the whims of whichever judicial panel that you draw) with the CURRENT law, as the current law has been mashed (like a nose of wax, even).