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Should Congress Amend the Patent Eligibility Statute?

David Zuckerman, July 17, 2017

The question of which inventions should be eligible for patent protection in the U.S. has persisted, in one form or another, since the beginning of U.S. patent law itself. Several relatively recent Supreme Court decisions have prompted a renewed interest in patent eligibility among members of the patent community. In 2012, for example, the Supreme Court invalidated a patent relating to quantitative thresholds for drug effectiveness because the claimed invention did not “add enough” to natural laws. About two years later, the Supreme Court struck down a patent relating to financial software as being directed to an “abstract idea”.

In both of these cases, the Supreme Court held that the patents were categorically ineligible for patent protection. These decisions sparked a renewed interested in patent community as to which subject matter should be patent eligible. In particular, a debate has emerged over whether Congress should amend the current statute governing patent eligibility in response to these decisions. The current patent eligibility statute provides that any new and useful process, machine, manufacture, or composition of matter is eligible for patent protection.

Proponents of amending the patent eligibility statute argue that the recent string of Supreme Court cases injected too much uncertainty into patent law. Because the Supreme Court declined to fully explain when a claim “adds enough”, or to define an “abstract idea”, proponents argue, patent applicants cannot reasonably ascertain whether their inventions are eligible for patent protection, and the legitimacy of previously issued patents has now been retroactively called into question. As a result those in favor of legislation believe Congress should step in and clarify which inventions are eligible for patent protection.

Detractors of legislating the patent eligibility statute argue that the Court of Appeals for the Federal Circuit has acted as a stabilizing force in patent eligibility law. For example, detractors might point to Federal Circuit decisions holding an invention patent eligible because the invention reflects an improvement to the functionality of a computer (as opposed to simply using generic computer technology to implement known techniques). This standard, the argument goes, has led to a clarifying trickle-down effect at the lower District Courts and the U.S. Patent and Trademark Office. However, proponents of amending the patent eligibility statute will question the magnitude of this clarifying trickle-down effect.

Detractors from amending the patent eligibility statute are also wary of the possible unintended consequences of pursuing such legislation. The process for enacting a bill into law can be long and unpredictable, and the law that emerges is often unrecognizable from the bill that was originally introduced. As such, detractors argue that legislation that is intended to clarify patent eligibility law may, in fact, have the opposite effect. Moreover, detractors argue that there does not appear to be the level of industry consensus or political will that would likely be necessary for the successful enactment of amendments to the patent eligibility statute. There are also concerns that the Supreme Court could interpret the text of the amended statute in an unexpected way or simply invalidate the amendment altogether. Meanwhile, proponents of legislating the patent eligibility statute might counter that the current level of uncertainty is unacceptable, and that there is little to lose from at least pursuing legislation.

It is as yet unknown whether this debate will prompt Congressional action with regard to patent eligibility. Proposals for specific language to amend the patent eligibility statute have been introduced by various members of the patent community, although no such bills have yet been introduced in Congress. As patent eligibility law continues to develop, patent practitioners, owners, and the like should continue to monitor patent eligibility law for new developments.

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