IPLAC Offers § 101 Revision That Attempts to Harmonize IPO and AIPLA Proposals

 By Donald Zuhn --

In a letter sent to U.S. Patent and Trademark Office Director Andrei Iancu earlier this month, the Intellectual Property Law Association of Chicago (IPLAC) presented its proposal for a revised version of 35 U.S.C. § 101.  IPLAC described its proposal as a harmonized version of revisions to § 101 proposed by the Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA), which IPLAC indicated "represent the most straightforward and comprehensive revisions to Section 101."  In crafting a harmonized version of § 101, IPLAC sought "to combine the recommendations from IPO and AIPLA into a single proposal furthers the current dialog regarding possible Section 101 revisions that can address the ambiguity and uncertainty recent Supreme Court precedent has created."

The IPLAC proposal reads as follows:

101(a) Eligible Subject Matter: Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) Sole Exceptions to Subject Matter Eligibility: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole exists in nature independently of and prior to any human activity, or exists solely in the human mind. In determining eligibility, each claimed invention shall be considered as a whole.

101(c) Sole Eligibility Standard: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to (i) the requirements or conditions of sections 102, 103, and 112 of this Title, (ii) the manner in which the claimed invention was made or discovered, or (iii) the claimed invention’s inventive concept.

In its letter to Director Iancu, IPLAC declared that "[o]ver the last few years, the Supreme Court has been injecting ambiguity into the Section 101 subject-matter eligibility requirement, moving farther away from the language of the statute itself," adding that "[t]he recent patent eligibility case law is confusing and creates uncertainty as to both the availability of future patents and the validity of existing patents."  Expressing the belief that "judicial interpretation is unlikely to correct existing ambiguity and uncertainty," and arguing that subject matter eligibility should not "be subject to changing definitions developed and adjusted by courts over time," the association seeks Congressional intervention to "clarify[] and re-establish[] the distinct role of section 101 in limiting patent eligibility to practical uses of processes, machines, manufactures, and compositions of matter as recited in the statute."

IPLAC also provided a section-by-section comparison of its proposal with the current statutory text of § 101 as well as the IPO and AIPLA proposals, along with comments regarding the language that IPLAC used in its own proposal.  For example, with respect to IPLAC's decision to replace the phrase "subject to the conditions and requirements of this title" in the current text of § 101 with the phrase "subject only to the exceptions, conditions, and requirements set forth in this Title" (emphasis in IPLAC's comments), the association noted that the revised language "makes clear that the conditions and requirements of patentability are set forth in the patent statute, and the conditions and requirements set forth in the statute are the only conditions and requirements of patentability," adding that "[t]his means that Congress has not granted the USPTO nor the courts the ability to create its own conditions and requirements of patentability that are not expressly set forth in the patent statute."  In addition, IPLAC explains that § 101(c) of its proposal "addresses the increasing problem with the USPTO and courts confusing patent eligibility with other standards under the Patent Act," and "expressly prohibits the USPTO and courts from determining patent eligibility by considering whether the claimed invention, in whole or in part, include an 'inventive concept'" (emphasis in IPLAC's comments).

For additional information regarding this and other related topics, please see:

• "AIPLA Proposes Legislative Changes to 35 U.S.C. § 101," May 16, 2017
• "ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee," March 29, 2017
• "What to Do about Section 101? IPO Provides Its Answer," February 9, 2017

Comments

[Kevin E Noonan]

In the section by section comparison there are footnotes that say the natural law, phenomenon of nature, and abstract idea exceptions "were first revealed" in Bilski; this is unfortunate and incorrect. From Diamond v Chakrabarty:

This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948); O'Reilly v. Morse, 15 How. 62, 112-121 (1854); Le Roy v. Tatham, 14 How. 156, 175 (1853).

[Skeptical]

I really like the proposal.

Of course, in the Congressional record, it should (must?) be made clear that this change expressly overrules ALL of the Supreme Court 101 (and pre-101 "related") jurisprudence.

[Karen Canady]

Agree - Congress acted before to rein in the courts on patentable subject matter with the existing Section 101, and the courts never stopped using prior case law to extend the wishy-washy, nebulous and ever-changing eligibility standard in new directions.
I'm still nervous that no act of Congress can get them to stop.
I worry that, were this enacted, next will be endless proceedings to interpret what "as a whole" means.

[Greg DeLassus]

"... subject only to the exceptions, conditions, and requirements set forth in this Title."

What does this mean vis a vis obviousness-type double-patenting. Is section 121 enough to bring ODP into the category of requirements "in this Title"?

[Greg DeLassus]

Also, what about improper Markush grouping?

[MaxDrei]

I have invented a new joke. Not only new, it's also non-obvious and useful (laughter is the best medicine). We don't yet have telepathy, so it certainly exists outside the human mind.

I am minded to patent it, just as soon as the IPLAC proposal assumes the force of law. Anybody dispute that?

[Skeptical]

Greg,

Both of your questions have nothing to do with Section 101 eligibility.

MaxDrei,

What is your point?

[MaxDrei]

What is my point? That a claim to a new joke, expressed as a process, ought not to be eligible for a patent but, under the IPLAC proposal, would appear to pass muster.

[Kevin E Noonan]

Max: do not forget (looking at the trees of Supreme Court 101 jurisprudence) the forest of “machine, manufacture, composition of mater, or process.” I suspect you will try to claim your joke s “a method of making people laugh” but then you aren’t claiming the joke, are you?

[Skeptical]

MaxDrei's attempt shows the "overplay" that so often attends to his views.

He has been "around the block" so many times that he does not recognize just how tiny his block is, nor that the rest of the world (or rather, and more importantly, that the US Sovereign), is simply not like his little block.

[MaxDrei]

Thanks Kevin, and, yes, claim it as "A process....."

Magicians, performers, raconteurs earn their crust, like the peddlers of psycho drugs, by making people feel better. Does it matter, whether the claim is from a pharma firm and directed to a new use of molecule X or from a stage performer, and directed to a "process" of reciting a string of words?

I think it does. But it seems that, for you, it makes no difference. Or do I read you wrong?

[Skeptical]

MaxDrei - you seem to have already lost your way from the Useful Arts....

[Skeptical]

...note the inclusion of the word "useful" and please note what that means for the U.S. Sovereign...

[MaxDrei]

The word "useful" would suggest to me the results of the claimed subject matter, the effect achieved by the claimed subject matter. I put it to you, that jokes and happy pills achieve the same (or a comparable) useful effect.

[Skeptical]

As noted, MaxDrei, your "view" is simply too circumscribed by your travels, and does not come close to the meaning within the U.S. Sovereign.

It's as if you are purposefully trying to not understand....

[Kevin E Noonan]

Interesting. Max you will agree that the joke, both in the creating it and the understanding and appreciation of it, exist only in the human mind (albeit, more than one human mind). So its "existence" outside the human mind is a function of either the spoken word (for the comedian) or perhaps the printed word (for more sophisticated jokesters like PG Wodehouse).

But there is case law saying a signal (for, after all, what is speech except a signal) is not patent eligible, and also law that says merely putting on paper an ineligible abstract idea (E=mc2, for example) isn't eligible either. So I think the joke, or the novel, or the aria, are all outside the scope of patent law for at least these reasons and the IPLAC proposal does not fall on that basis.

And, full disclosure, as of Tuesday evening I am on the IPLAC Board, but all this happened well in advance of my election.

Thanks for the thought - not an unreasonable question to ask, particularly in view of Justice Breyer's continued presence on the bench. I can hear the echoes of one of his hypotheticals in your comment.

[skeptical]

Breyer is cringeworthy (jurisdiction stripping, anyone)...

A further rumination...
Section dealing with (read that as overturning) the Oil States case by explicitly noting who an inventor is and that by having been deemed to have passed the legal requirements of examination, that the Inventor’s personal inchoate right has matured into a fully legal personal property right that is expressly not a “Public Right” or “Franchise Right”...

(Congratulations on the election, and in the best Picard tones: “Make it so.”

[MaxDrei]

Good argumentation Kevin. Thinking about it, a computer has no moods, no depression, so is unable to be cured by jokes. Telling jokes to computers would be futile.

As to outside the human brain though, do not jokes improve speed of healing of broken human bones. And what about animal brains. Milking cows yield more milk when the right music is played to them. Perhaps pigs thrive better (or chimpanzees in research laboratories) in a jokey environment?

But this is all a bit speculative, i do concede.