Proposed legislation to clarify what is and is not patent-eligible has been advanced by the American Bar Association Section of Intellectual Property Law. This is now the second major IP group sent to the U.S. Patent and Trademark Office Director Michelle Lee such a proposal. The proposal includes revisions to Section 101 of the Patent Act. The Patent Act Section 101, includes provisions regarding eligibility. The proposed revisions emphasize that claims should be patent-eligible so long as they not preempt the use by others of laws of nature, natural phenomena, or abstract ideas. The proposed revisions also recite that in determining whether an invention is patent-eligible, the issues like novelty and obviousness should not be considered.
The Group said it believes its proposal “is an important first step toward a politically palatable solution to the unworkable and detrimental state of current 101 jurisprudence.”
Another group, the intellectual Property Owners Association released a different proposed legislation earlier this year. The USPTO has received comments from several industry groups for a legislative revision of Section 101.
Many are concerned that the, high-profile Supreme court decisions on patent eligibility, including Prometheus and Alice have made it unclear what is eligible for a patent. The ABA and IPO suggest the best way to solve the issue is for Congress to revise the patent eligibility statue.
The ABA argues that the high court’s rulings “have injected ambiguity into the eligibility determination” by requiring courts and the USPTO to determine if the claimed invention is “well-known” or “routine”, issues the ABA says should only be relevant when determining if an invention is anticipated or obvious.
The ABA further maintains that in the past, the main concern from the Supreme Court’s, in its patent-eligibility decisions has been avoiding patent that “preempt” others from using basic building blocks like abstract ideas. The ABA said that cases such as Alice has “led the lower courts to lose sight of the fundamental preemption concern that has driven patent eligibility jurisprudence”.
The ABA stated that an example of that was, the Federal Circuit’s 2015 Sequenom decision in which the court found that Sequenom Inc.’s fetal DNA test is not patent-eligible, because it is directed to a natural phenomenon, despite the fact that the court also said it was a groundbreaking innovation that did not preempt the use of a scientific discovery.
The ABA argues that is proposed legislation “directly applies the long-standing fundamental concern of Supreme Court precedent” and “at least substantially mitigates if not resolves newly injected ambiguity and confusion into the eligibility determination” by the use of factors relevant only to anticipation and obviousness.
The proposal specifies conditions under which inventions would not be patent-eligible. And under this section patent eligibility will not be negated when a practical application of a law of nature, natural phenomenon or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored.
The proposal further states that patent eligibility shall not be negated based on considerations of patentability like novelty and obviousness.
The released proposed legislation from IPO’s in January is similar to the ABA’s in some ways. Where the ABA’s proposal focuses on prohibiting patents that preempt the use of natural phenomena and abstract ideas, the IPO’s seeks to define what types of inventions are not patent-eligible.