Lawyers outline proposals to revise ‘detrimental’ section 101
The IP law section of the American Bar Association (ABA) outlined its recommended revisions of 35 USC, section 101 in a recent letter to the US Patent and Trademark Office (USPTO).
The association provided its interpretation and suggested revisions of section 101, which covers patent subject matter eligibility and has been the focus of a number of recent US Supreme Court decisions.
In a previous letter to the USPTO, sent in January, the association explained that, until recently, the Supreme Court had established a patent eligibility test that “generally struck a proper balance between preventing the patenting of pure laws of nature, natural phenomena, or abstract ideas themselves, while authorising the patenting of their application in particular fields”.
But now, according to the ABA, recent opinions from the court have “injected ambiguity” into the eligibility determination.
It explained that the ambiguity is created by the Supreme Court requiring courts and the USPTO to apply criteria such as “well known”, “routine”, “conventional or obvious”—factors that were previously relevant only to novelty and obviousness—in order to ignore limitations and render a claim patent ineligible.
The association claimed that decisions such as Alice v CLS Bank and Mayo v Prometheus have led the lower courts to lose sight of the fundamental “preemption concern” that has driven patent eligibility jurisprudence.
Over the past 50 years of eligibility jurisprudence, the Supreme Court has stated that its fundamental concern is the potential preemption of “the use of building blocks like laws of nature, natural phenomenon and abstract ideas”, said the association.
Earlier in March, the IP section of the ABA passed a legislative proposal revising section 101.
The proposal recognises the “proper role of preemption in establishing a patent eligibility gateway consistent with the fundamental concerns of the Supreme Court”, it said.
It does this while leaving determinations of patentability, including “inventive concept”, to other provisions of the patent statute, namely sections 102, 103 and 112.
The amendment clarifies that “useful inventions as defined by each and every limitation of the claims of a patent satisfy the patent eligibility requirements of section 101 so long as the claims do not preempt the use by others of all practical applications of laws of nature, natural phenomena or abstract ideas”.
It also clarifies that the determination of patent eligibility under section 101 is independent of patentability under other sections of the statute.
Donna Suchy, chair of the IP section of the ABA, said that the proposal is not intended to be the final word on amending the section.
“But, we believe it is an important first step toward a politically palatable solution to the unworkable and detrimental state of current 101 jurisprudence,” she said.
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