Written by: Michael P.F. Phelps
Raise your hand if you think 35 U.S.C. §101 has gotten too big for its britches! Raise your hand if you think Section 101 needs to move over and let Sections 102, 103 and 112 do their jobs! Raise your hand if you’re tired of subjective and inconsistent patent decisions! If your hand is up, have hope, because the ABA, AIPLA and IPO are running to help.
“Patent Eligibility” under 35 U.S.C. §101 is a hot topic. Section 101 allows one to patent “any new and useful process, machine, manufacture, or composition of matter…subject to the conditions and requirements of this title.” If your invention satisfies the “new and useful process…etc.” requirement, it is “patent eligible,” and can proceed to review under Sections 102 (which prohibits a claim if it is already known in the prior art), 103 (which prohibits a claim if it is an obvious combination or modification of the prior art) and 112 (which requires that one describe what the invention is, and in a manner sufficient to enable one to practice the invention) of the Patent Law.
When it was enacted in 1952, Section 101 was said to include “anything under the sun that is made by man.” The act’s co-author, Pat Federico, said that even then-controversial claims to new methods for using old devices would be allowed though the Section 101 gate, although “the condition expressed in section 103 would rule out many such methods.” It was a simple system: Section 101 lets the ideas in, and Sections 102, 103 and 112 weed out the unpatentable ones.
But where some see a wide open gate, the Supreme Court sees a maze of obscured and hidden obstacles. For example, in Alice Corp. v. CLS Bank Int’l, the Supreme Court tells us that claims to “abstract ideas” are patent ineligible under Section 101. What is an “abstract idea?” Well, after three years of intense scrutiny by the courts and USPTO, it’s safe to say that nobody really knows. And how about Ass’n for Molecular Pathology v. Myriad? Myriad created a “new and useful…composition of matter” that did not previously exist as an isolated thing in nature, but merely satisfying the words of Section 101 didn’t seem to be enough for the for Supreme Court to allow Myriad’s composition of matter to be patent eligible.
Some people think Section 101 jurisprudence is getting out of hand. Cases like Alice and Myriad add an unpredictable and expensive layer to patent prosecution and litigation. If you don’t know what I mean, ask your patent attorney friends to share their best Section 101 stories. If you really want to stir the pot, ask them why the court or examiner didn’t simply apply Section 102 or 103 to get the same result (cover the kids’ ears before the apoplectic outburst begins).
Even the USPTO can’t seem to figure it all out. This is aptly demonstrated by the USPTO’s July 25, 2017 publication entitled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” It provides a history of Section 101 caselaw and a summary of the public’s many grievances with the state of affairs, but no explicit guidance at all about how Section 101 should or will work on an ongoing basis. At best it’s “look at those cases, and make your best guess.” And that’s what the USPTO’s guidance has been all along.
For those who are not fond of this trend, there may be hope in sight. The American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), and American Bar Association Section of Intellectual Property Law (ABA-IPL) have separately proposed revisions to Section 101. Some of the highlights are explained below.
No “New” is Good News
The three proposals all remove Section 101’s requirement for the invention to be “new.” This makes perfect sense because the requirement for “novelty” is already set forth in Section 102. Removing “new” from Section 101 eliminates a loophole for avoiding the carefully crafted dictates of Section 102.
Reining in Judicial Exceptions
The IPO and AIPLA proposals eliminate judicial exceptions. For example, the AIPLA proposal states that patent eligibility is subject “only to the conditions and requirements set forth in this title,” and defines, in subpart (b), the “sole exceptions to subject matter eligibility.” That’s about as clear as it can be.
The ABA-IPL proposal stands out from the others by doing little or nothing to rein in judicial exceptions. The language does identify an exception, but it is not a “sole” exception. This proposal also differs only slightly from Section 101’s original language where it states that eligibility can be lost if there is “a finding that one or more conditions or requirements under this title have not been met.” That kind of language didn’t forestall judicial exceptions in the past, and it likely would not in the future.
All three proposals specifically define exceptions. Here again, the IPO and AIPLA take similar approaches. In both cases, the “sole” exceptions to eligibility are if the claimed invention as a whole (i) exists in nature independent of and prior to any human activity, or (ii) can be performed solely in the human mind. Both of these exceptions are fairly objective, which bodes well for a future with straightforward and consistent rules.
The ABA-IPL proposal takes a different approach, and focuses on preemption. A claim “may” be denied eligibility if the scope of rights under the claim “would preempt the use of others of all practical applications of a law of nature, natural phenomenon, or abstract idea.” This proposal still leaves us with the cryptic “abstract idea” language, and how does one measure preemption of “all practical applications?” It seems well-intentioned, but one can see judicial and administrative headaches in the very near future if this revision is adopted.
Eliminating Section 102, 103 and 112 Rejections in Disguise
All three proposals take similar measures to prevent courts and examiners from using Section 101 as a shortcut for invalidating a claim under Section 102, 103 or 112. For example, the ABA-IPL proposal states that “[e]ligibility…shall not be negated based on considerations of patentability as defined in Section 102, 103 and 112.” This is a welcome relief to those who think Section 101 has been relied upon to avoid more difficult questions under Sections 102, 103 and 112.
So what is the future of Section 101? It’s like an abstract idea—nobody knows. But at least we are seeing meaningful steps being taken to urge congress to act.