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Tillis, Coons Vet Patent Eligibility Bill Principles with Stakeholders

March 26, 2019, 11:55 PM

Sens. Thom Tillis and Chris Coons have outlined four principles for new patent eligibility legislation in a message to technology and pharmaceutical company representatives and others in advance of a fourth closed-door meeting on their effort.

Aides to Tillis (R-N.C.), the chairman of the Senate Judiciary Committee’s IP subcommittee and Coons (D-Del.), its ranking member, will present a “skeletal outline of legislation” at an April 17 meeting with industry and trade group representatives, according to a March 26 email from the aides obtained by Bloomberg Law. A spokesman for Tillis confirmed the email.

The two lawmakers have convened three private roundtables with industry representatives since December to discuss how to redefine what inventions qualify for patent protection, in an effort to revamp Section 101 of the federal patent law. The last meeting was held March 21.

Section 101 allows patents for a new and useful process, machine, manufacture, or composition of matter. U.S. courts have held that inventions covering a law of nature, a physical phenomenon, or an abstract idea can’t be patented.

Inventions meeting the statute’s requirements for patent eligibility—especially novelty, obviousness, sufficient disclosure, written description, and definiteness— should be eligible for protection, according to the first principle. That’s regardless of whether the invention is “new or old, conventional, known, or using other terms relevant to determining obviousness or anticipation,” under that principle.

Patent claims should be considered as a whole, rather than in separate parts, when analyzing eligibility of an invention, the second principle states. Each limitation or language differentiating an invention from prior inventions should be “given equal weight, and none dismissed or discounted as ‘routine,’ ‘known, ‘conventional,’ mere ‘data gathering,’ mere ‘post-solution activity,’ or the like,” according to that principle.

Under the third principle, diagnostic and life science technologies should be eligible for patent protection if they meet other existing statutory requirements, and shouldn’t be seen as laws of nature, natural phenomena, or otherwise patent-ineligible technologies.

Tillis and Coons also are trying to address court-made exceptions to eligibility. Any changes to Section 101 “should statutorily codify a definition and/or exception(s) to patent eligibility,” the fourth principle says. “Any statutory exception(s) should not use the existing judicial exceptions of abstract ideas, laws of nature, or natural phenomena,” that principle says.

Statutory exceptions should be the only basis for excluding inventions from eligibility and courts may not expand them, the fourth principle says. Eligible subject matter should be defined so it can adapt to new technologies that haven’t yet been invented, they say.

Tillis and Coons have vowed to advance a bill to address patent eligibility challenges, which they say could leave the U.S. behind in the global innovation race. The U.S. Supreme Court has issued a series of decisions on patent eligibility that practitioners say have left the law poorly defined.

Technology, pharmaceutical and biotech companies, along with legal practitioners, say they’re uncertain about what inventions are patentable, and which granted patents can survive challenges.

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