Friday, May 12, 2017

AIPLA - Proposes Legislative Amendment to Subject Matter Eligibility Test Under 35 USC 101

The US Supreme Court's decisions in Alice and Mayo have generated considerable uncertainty and confusion on what subject matter is patent eligible since 2014. Although the Federal Circuit somewhat clarified the subject matter eligibility test in 2016, the current test is still too uncertain. It makes no distinction between the separate requirements set forth in 35 USC 101 (subject matter eligibility), 35 USC 102 (novelty and statutory bars), and 35 USC 103 (obviousness). For example, without rigorous comparison to the prior art, decision makers are free to speculate on whether the claim has an "inventive step." Note "inventive step" is an European patent term for what we refer to as non-obviousness in the US. All statutory sections come into play in unpredictable ways in the Alice/Mayo subject matter eligibility test. Yet Judge Rich a primary architect of US patent law of 1952, cautioned that 35 USC 101, 102, and 103 are independent requirements in determining patentability. Unfortunately, the wisdom of this insight appears to be lost.

Thus, courts now talk about whether the claim is an abstract idea based on how they viewed prior subject matter eligibility cases. Yet any patent lawyer knows each patent case has it own facts so it is hard to know the outcome of subject matter eligibility. Sometimes it is eligible and sometimes not. The Supreme Court's unwillingness to define what is an abstract idea in so called step one invites decision-makers to exercise their opinion without much if any limit. Those attacking validity of the patent argue the abstract idea of any claim is a high level idea that none of us would be happy to see patented. Former Federal Circuit Judge Markey told us reducing a claim to the "gist of the invention" is legal error! Now it is the first step of Alice. What happened to the rule the claim determines the scope of the invention. To let each defendant rewrite a carefully drafted detailed claim to its gist clears the way for straw man arguments. Anyway, after step one the decision maker continues to opine on whether the claim limitations he or she read out of the claim constitute "significantly more" than the abstract idea. To put it bluntly 35 USC 101 subject matter eligibility is what the decision-maker decides.

As people especially those with novel and nonobvious software related inventions have grown impatient with the unworkable nature of this uncertain confusing legal test, the largest organization of patent attorneys, that is, the American Intellectual Property Law Association (AIPLA) has stepped in and announced a reasonable legislative proposal for amending 35 U.S.C. §101 to address the confusion and uncertainty in patent ineligibility.

Here's the AIPLA announcement verbatim:

The AIPLA proposal preserves most of the language of the current Section 101, but replaces the judicial exceptions to eligibility with a new framework that uses clearly defined statutory exceptions. It is intended to provide a clear and objective test for eligibility and to expressly reaffirm the gatekeeping conditions of patentability in Sections 102, 103, and 112. The AIPLA Board of Directors approved the following resolution:

RESOLVED that the American Intellectual Property Law Association (AIPLA) favors, in principle, amending 35 U.S.C. § 101 to recite the following:

35 U.S.C. § 101—Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

The Legislative Proposal derives from the work of the AIPLA Patent Eligible Subject Matter Task Force, which spent over two years considering the current state of the law and a wide variety of alternative solutions. It concluded that the Supreme Court can no longer be expected to remedy the confusion and uncertainty that its rulings have created among the courts, the USPTO, and inventors.

To read the AIPLA Legislative Proposal and Report on Patent Eligible Subject Matter, click here."

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