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.