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Intellectual Property Groups Push for Patent Eligibility Law Change

Dec. 11, 2018, 1:00 PM

A call for clearer rules about what inventions can get patent protection has gained the support of regional intellectual property groups ahead of a closed-door Capitol Hill meeting to weigh the need to improve laws on patent eligibility.

The intellectual property law associations of New York, New Jersey and Boston, and the National Association of Patent Practitioners will support a proposal from the IP Owner’s Association, and the American IP Law Association (AIPLA), Peter Thurlow, president of the New York Intellectual Property Law Association, told Bloomberg Law Dec. 10.

The groups are advancing the proposal ahead of a Dec. 12 meeting on Capitol Hill on the subject convened by Sens. Thom Tillis (R-N.C.) and Chris Coons (D-Del.). The meeting may help the lawmakers lay the groundwork for legislation in the 116th Congress.

The groups are calling on lawmakers to remove the phrase “abstract idea” from Section 101 of the patent law and say instead that inventions that exist “solely in the human mind” aren’t eligible for patent protection.

Four Supreme Court rulings in recent years have created uncertainty among inventors about what inventions are patentable. The U.S. Supreme Court since 2010 has created tough standards for overcoming three exceptions to patent eligibility: inventions covering a law of nature, a physical phenomenon, or an abstract idea can’t be patented.

The proposed change in the law would restore a broad scope of inventions eligible for patenting, including those in medical diagnostics and software, Thurlow said.

“We believe this new language will overrule this judge-made doctrine and takes a fresh start,” he said.

Practitioners say the terms the high court laid out in the four cases are poorly defined and leave companies unable to to predict whether they can patent their inventions. Critics say the uncertainty undermines the U.S. patent system and discourages research and innovation.

The court held in Mayo Collaborative Services v. Prometheus Laboratories, Inc. that patents on a diagnostic test were invalid for covering subject matter directed to “laws of nature,” and the claims describing the invention didn’t “add enough” on the application of these laws to warrant patent protection. In Alice Corp. v. CLS Bank International, the court held that computer-implemented inventions can’t be patented if they cover abstract ideas.

Inventions involving emerging technologies such as blockchain, artificial intelligence and machine learning will also require patent protection, heightening the need for clarity about what’s patentable, Thurlow said.

“Right now many people are concerned that it is somewhat abstract,” he said.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com
To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com