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. § 100.  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