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Oct 11, 2019, 2:54:58 PM

Patent Eligibility - How to React to Potential Changes Coming Soon

by Matt Osenga

Patent seal imageThe Patent Act states that most things can be patented and sets forth four categories for new or improvement inventions that can be patented: 

1)     processes,

2)     machines,

3)     articles of manufacture, and

4)     compositions of matter.

These broad categories would seem to indicate that most things invented by man can be patented.

Limitations on Patent Eligibility

In recent years, however, a number of big tech and other companies have complained that they were facing an increasing number of patent infringement lawsuits, many of them filed by non-practicing entities (NPEs) or “patent trolls.” These companies asked the courts to restrict the subject matter that can be eligible for patenting. In response, the courts have indicated that “laws of nature, natural phenomena, and abstract ideas” cannot be patented. 

The Supreme Court issued several rulings that have resulted in extreme confusion for this area of patent law. The tests recited by the Court confuse patent law’s novelty and non-obviousness requirements with patent eligibility. As a result of these rulings, a large number of patents, especially in the life science and software fields, have been invalidated as not being directed to patent eligible subject matter. Investment in research and innovation in fields such as personalized medicine has stagnated due to the uncertainty in this area of the law.

What Has Happened Next?

As the highest appeals court that rules on patent law, there have been many appeals for the Federal Circuit to help to clarify the law. There are a number of judges on the court that are sympathetic to the plight of patent owners and applicants. Being bound by the Supreme Court’s mess of decisions, however, they have indicated that there is little that they can do.

The USPTO has tried to issue guidelines to assist applicants and to provide more certainty in this regarding subject matter that can be patented. The courts, however, are not bound by any USPTO guidelines. This means that even if a patent is granted, it may be quickly invalidated by the courts.

Congress as the Only Hope

This means that the only source of help for inventors and those looking to invest in innovation is Congress. Senators Chris Coons (D-CT) and Thom Tillis (R-NC) have introduced a Patent Reform bill that they hope will provide the help sought.

The bill would keep the four statutory categories for patents, but would explicitly overrule the judicially created exceptions to patentable subject matter. Instead, in an effort to keep the courts from adding more exclusions, the bill includes a specific list of what is excluded from patent eligibility.

The bill would not permit patents to be granted for:

(1) fundamental scientific principles,

(2) products that exist solely and exclusively in nature,

(3) pure mathematical formulas,

(4) economic or commercial principles, and

(5) mental activities.

The bill would also require that patents recite a “practical application” of the invention, so that broad, generic claims cannot be patented. Each element of the patent claims should be considered in determining eligibility, without regard to its novelty, inventiveness, or potential clarity. This would overrule the Supreme Court’s tests that have confused these distinct requirements for patentability.

One potential area of concern for patent applicants is the bill’s proposed amendment to the definition of a “useful” invention as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” The “specific and practical utility” and the “field of technology” aspects may still lead to ambiguity in this area of law.

Will This Bill Become Law?

The answer to this question is difficult to determine. When the Senate IP subcommittee held hearings on the subject matter bill earlier this year in June, many of the stakeholders and experts in the field expressed concerns and frustrations with the current state of the law. It is still clear, however, that there is significant opposition to the bill by many of the big tech companies. There is also a political aspect to the bill, as it has been opposed by the ACLU. There is also some concern that permitting more patents in the biotechnology area could increase the price of drugs. More hearings and work on the bill are scheduled for later this fall.

What Can You Do?

The current state of the law is frustrating for innovators and those looking to invest in innovation. You can contact Senators Coons and Tillis or another member of the Senate IP Subcommittee to express support for the bill.

In the meantime, your best bet would be to contact an experienced patent attorney for assistance in preparing patent applications that describe and claim your inventions in the best way to comply with the current state of the law and USPTO patent subject matter guidelines.


This blog is made available by Goodman Allen Donnelly for general information, and does not constitute legal advice. By reading this blog, you understand that there is no attorney-client relationship between you and the firm. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

 

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