April 3, 2017
By: Alex E. Breger
The IP Law Section of the American Bar Association (ABA) has submitted a letter to USPTO Director Michelle Lee proposing amendments to 35 U.S.C. § 101, the U.S. patent subject-matter eligibility statute. The letter criticizes several recent Supreme Court decisions (such as Alice v. C.L.S. Bank (2014)) for injecting undue ambiguity into subject-matter eligibility jurisprudence resulting in an unworkable standard that the USPTO and District Courts have not been able to consistently apply.
The letter asserts that claims should be patent-eligible so long as they do not “preempt” laws of nature, abstract ideas, or physical phenomena, which are “judicial exceptions” not eligible for patent protection per se. It accuses recent appellate decisions of improperly conflating novelty (35 U.S.C. § 102) and obviousness (35 U.S.C. § 103) into § 101 analysis. The letter argues that by injecting novelty and obviousness issues into § 101 jurisprudence, the Court has undermined the fundamental application of § 101’s preemption doctrine.
The ABA further advocates for an express codification of the Supreme Court’s 1981 Diamond v. Diehr decision into the statutory language of § 101. The Diehr ruling acknowledged that a claim involving an abstract idea, law of nature, or physical phenomenon is nevertheless patent-eligible if the claim “considered as a whole” performs a function that the patent laws were designed to protect. The ABA’s suggested new language would amend § 101(b) to clarify that “practical applications” of claims otherwise directed to a judicial exception are eligible for patent protection.
Several other prominent groups and entities have recently submitted correspondence to the USPTO advocating similar concerns. This list includes the American Intellectual Property Law Association (AIPLA), Intellectual Property Owners Association (IPO), Japan Intellectual Property Association, Google, IBM, the National Association of Realtors, the Software Alliance, Pharmaceutical Research and Manufacturers of America (PhRMA), and the SMU Dedman School of Law.
A copy of the letter may be accessed here.