Current State of Patent Eligibility and Potential Reform

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Downs Rachlin Martin PLLC

[author: Kelsey Kehoe]

Will there be patent eligibility reform following the Senate Committee hearings?

Major points of contention during the hearings were (1) the patentability of human genes, (2) whether proposed changes to 35 U.S.C. § 112(f) would require unnecessarily detailed invention descriptions, (3) the bill’s proposed definition of “useful,” and (4) the bill’s proposed language within § 100(k). The bill is now being revised and a final bill may be reintroduced as quickly as the first week of July.

Reform efforts have been underway for some time to rectify the uncertainty caused by the Supreme Court’s interpretation of 35 U.S.C. § 101 (“Section 101”) in Alice Corp. v. CLS Bank International(“Alice”). The Alice decision and prior Supreme Court cases have established narrow and uncertain grounds for patent eligibility and made it significantly more difficult to patent computer-implemented inventions.

The heads of the Senate and House Intellectual Property Subcommittees recently released a draft bill focusing on reforming Section 101 of the Patent Act. There are a few significant changes the bill would make. First, the draft includes a provision stating Section 101 shall be construed in favor of eligibility. It also eliminates all judicially created exceptions to subject matter eligibility, which would abrogate the Alice decision. Additionally, the draft has a new proposed definition of the word “useful.”

The committee held three hearings on June 4th, 5th and 11th, with forty-five panelists of various backgrounds, to solicit feedback on the proposed bill. Senators Thom Tillis and Cris Coons led the hearings.

(1) Major Point of Contention- Patentability of Human Genes

A major point of contention that was raised by panelists, particularly, representatives of the American Civil Liberties Union (ACLU), was whether human genes will be patentable if the bill is passed. Panelists debated whether the bill would abrogate Association for Molecular Pathway v. Myriad Genetics, Inc., (“Myriad”) which bars a company from patenting a gene as it exists in the human body.

Some panelists however, argued that overruling Myriad would be beneficial, asserting that patent protection is needed to promote research on natural materials for medical advancements.

Senator Coons responded that he and Senator Tillis have no intention to overrule Myriad. And Senator Tillis dismissed the fear that the bill would allow human genes to be patentable and maintained that the issue did not need to be addressed in a redrafted bill.

Consensus of Concerns- § 112(f), definition of “useful,” and § 100(k)

There seemed to be a general consensus of concern over the following provisions of the draft bill:

(2) 112 (f)

Concerns were voiced about the language used in Section 112(f), particularly that this provision would have “disastrous” consequences for tech patents, as it would force inventors to describe their inventions in impossibly meticulous detail. Others voiced uncertainty as to how the provision would be applied by the courts.

(3) “Useful”

Proponents of the reform fear that the new definition of “useful” could be construed too narrowly, while opponents fear that it could be applied too broadly.

(4) 100 (k)

The language of provision 100(k) was challenged, many panelists asserting the terms “field of technology” and “human intervention” would create “long term confusion.”

Proponents of the Proposed Bill- Need for Reform

The proponents of the patent eligibility bill made a few key points and arguments throughout the hearings. These included:

  • The current patent law is “excessively incoherent, inconsistent, and chaotic,” and the reform is creating much needed clarification.
  • The limits created by the Supreme Court have put the United States at a competitive disadvantage as it is easier to secure patents in other countries. The United States’ patent system is now weaker in comparison to other countries.
  • The limits created by the Supreme Court need to be abrogated.
  • The lack of protection of patents is inhibiting critical advancements, particularly those in the medical field.

Opponents of the Proposed Bill- Major Critiques

The opponents and critics of the bill made a few key points and arguments throughout the hearings as well. These included:

  • Current patent law is not a mess. The decision in Alice should not be abrogated as it enables courts to quickly discard invalid patents.
  • The proposed bill will encourage and facilitate overly broad patents.
  • Lawsuits and undue costs on the public may increase as a result of the proposed bill.
  • The proposed bill will impede development.

Next Steps

Senator Tillis noted the overarching concerns of the panelists on both sides, and that there would be “further refinements” to the bill, which he hoped could be done quickly and that a final bill will be introduced sometime after the July fourth recess

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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