Q&A: Dina Blikshteyn on proposed US patent law
Following the introduction of two patent bills into Congress last week, WIPR asks Dina Blikshteyn, a patent expert at Haynes Boone, for her thoughts on the proposed new legislation.
Last week, August 3, US Senator Thom Tillis introduced the Patent Eligibility Restoration Act of 2022, a bill that would codify exceptions to patent eligibility and help to address the uncertainties that exist around what inventions are considered abstract under patent law.
“I have long said that clear, strong, and predictable patent rights are imperative to enable investments in the broad array of innovative technologies that are critical to the economic and global competitiveness of the United States, and to its national security,” said Senator Tillis.
“Unfortunately, our current Supreme Court’s patent eligibility jurisprudence is undermining American innovation and allowing foreign adversaries like China to overtake us in key technology innovations.”
The bill is expected to clarify definitions of patent eligibility and allow for inventions with technological components to be patent-eligible, while detailing enforceable exclusions.
The proposed legislation is particularly pertinent following the US Supreme Court’s refusal to take up the patent eligibility issue in American Axle & Manufacturing v. Neapco Holdings, and could bring welcome reform to patent protection in the US.
The day before, Senators Tillis and Patrick Leahy’s Patent Examination and Quality Improvement Act of 2022 was announced. This legislation promises to evaluate and improve the patent examination process and the overall quality of patents issued by the US Patent and Trademark Office (USPTO).
“This bill follows up on our hearing last year on patent quality, which put a spotlight on the fact that many US patents represent brilliant inventions and drive our economy,” said Senator Leahy.
“Unfortunately though, some are issued by mistake and can cause great expense for unsuspecting Americans and small businesses.
“I look forward to advancing legislative solutions that will help make sure that the patents that are issued are valid and to continuing my work supporting American creators and innovators.”
Dina Blikshteyn, counsel in the Intellectual Property Practice Group of Haynes and Boone and based in New York, gave her views on both bills.
How far will the Patent Eligibility Bill go in terms of patent protection?
The bill may create even more confusion in the patent-eligibility space.
First, the exception provision in paragraph (b)(1)(A) raises an issue as to whether a mathematical formula is patent-eligible when the formula is a useful invention or discovery. The patent examiners will need to decide what constitutes a useful invention or discovery as it pertains to a mathematical formula on a case-by-case basis.
Second, the exception provision in paragraph (b)(1)(B)(i) includes the term ‘technological’. This term is difficult to define and it will be left up to the courts to clarify when economic, financial, business, social, cultural, or artistic process is technological or non-technological.
