Patent Law

Erase ambiguity in patent eligibility law, ABA IP section urges USPTO

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The American Bar Association Section of Intellectual Property Law has weighed in on how patent eligibility should be determined by way of a letter to the U.S. Patent and Trademark Office.

The USPTO placed an invitation for public comment on patent subject matter eligibility in the Federal Register in October 2016. Patent eligibility has become an unsettled question in the past seven years with the release of several U.S. Supreme Court decisions, including Mayo Collaborative Services v. Prometheus Laboratories, in which the court invalidated patents on blood test methods to determine correct drug dosages; and Alice Corp. v. CLS Bank International, in which the court ruled that computer software that is based on an abstract idea isn’t eligible for a patent.

“These cases continue to have a substantial effect on patent eligibility in the United States,” the USPTO wrote.

In response to this call for comment, the ABA Section of Intellectual Property Law sent a letter (PDF) at the end of March, proposing Section 101 of the Patent Act be amended

The current ambiguity in patent law “has created the risk that investment in new technologies will be discouraged, thereby further risking U.S. leadership in many of those technologies,” Section Chair Donna P. Suchy wrote. The section’s proposed legislation “directly applies the long-standing fundamental concerns of Supreme Court precedent, and it is consistent with current ABA policy.”

The language suggested by the ABA IP section resembles a proposal by the Intellectual Property Owners Association, Law360 (sub. req.) reports, although there are differences.

“Where the ABA’s proposal focuses on prohibiting patents that pre-empt the use of natural phenomena and abstract ideas, the IPO’s seeks to define what types of inventions are not patent-eligible,” Ryan Davis of Law360 wrote.

The legislative language suggested by the ABA IP section can be read in the body of the letter.

Kevin E. Noonan wrote about the IP section’s letter on the Patent Docs blog, saying that he was a member of the task force that developed the proposed language.

“The letter identifies as the [Supreme] Court’s principal concern the possibility of undue preemption of a natural law, phenomenon of nature, or abstract ideas, but asserts that the way the court has converted those concerns into a test for patent eligibility in Mayo v. Prometheus and Alice v. CLS Bank is where the court has gone astray,” Noonan wrote. “The section’s proposal, in contrast, expressly recognizes the court’s pre-emption concerns and its ‘proper role’ in ‘establishing a patent eligibility gateway consistent with’ those concerns.”

Suchy wrote that the ABA Section on Intellectual Property Law did not consider this the “final word” on how Section 101 should be amended. “But, we believe it is an important first step toward a politically palatable solution to the unworkable and detrimental state of current [Section] 101 jurisprudence.”

Noonan agreed. “Time, of course, will tell how ‘politically palatable’ addressing Section 101 turns out to be,” he wrote. “But the [ABA Section on Intellectual Property Law] has shouldered its part of the responsibility for attempting to do more than throw up its hands, and instead rolled up its sleeves and produced a concrete proposal for policymakers’ due consideration.”

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