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IP Groups Developing Fresh Patent Eligibility Bill Proposal (2)

Oct. 16, 2019, 11:24 PM; Updated: Oct. 17, 2019, 8:13 PM

Intellectual property law organizations and others are working on a proposal for a patent eligibility law rewrite aimed at jump-starting talks on legislation, according to three sources familiar with the effort.

Sens. Thom Tillis (R-N.C.) and Chris Coons (D-Del.) have been working for months on legislation to respond to U.S. Supreme Court decisions in recent years that attorneys say have left patent eligibility law poorly defined. But the senators’ effort is delayed over disagreement among stakeholders, including on how to change Section 112(f) of patent law, which covers terms in patent claims describing the means to perform a function.

David Kappos, a former Patent and Trademark Office director, and Paul Michel, a retired chief judge of the U.S. Court of Appeals for the Federal Circuit, are leading the effort, the sources said.

The American Bar Association’s IP law section, the IP Owner’s Association, the American Intellectual Property Law Association and BIO, the biotech industry trade group, are among those involved, the sources said.

The group working on the proposal plans to present it to Tillis and Coons in the next several weeks, the sources said.

“Senator Coons is as determined as ever to move forward with Section 101 reform, and he and our office continue to meet with stakeholders from all across the ideological spectrum to make that happen,” a Coons spokesman said in an email.

A spokesman for Tillis didn’t immediately respond to a request for comment.

Tillis and Coons, chairman and ranking member, respectively, of the Senate Judiciary IP subcommittee, began meetings with stakeholders in December and unveiled a draft proposal in May. The lawmakers have not introduced a bill.

Kappos and Michel launched the effort at a meeting with the group and Senate aides in late September, the sources said. Neither Kappos nor Michel immediately responded to requests for comment.

“Representatives of the ABA-IPL Section welcomed an invitation from former Director Kappos and Judge Michel to participate in their efforts to advance the ball toward an acceptable, compromise reform of patent eligibility in section 101 of the patent statute,” Scott F. Partridge, chair of the ABA-IPL section task force on patent eligibility, said in an email statement. “We are hopeful significant progress toward a bill that would pass Congress can be achieved.”

The AIPLA, the IPO and BIO didn’t immediately respond to requests for comment.

(Updated with ABA comment)

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com; Seth Stern at sstern@bloomberglaw.com

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