The U.S. Supreme Court has played hob with the U.S. patent system, ruling that many wonderful, new, non-obvious, useful inventions cannot be protected by patent. A few brave legislators* are proposing a bi-partisan fix for what the Supreme Court has broken.
The Background
The right to a patent is set out in Art. 1, section 8 of the U.S. Constitution and implemented by the patent statute. Section 101 of the statute says:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
These provisions stretch all the way back to the Patent Act of 1793, meaning that they follow the U.S. Constitution by barely five years. Technology has changed a bit since then. Section 101 is very broad but also vague, leaving miles of room for Supreme Court mischief. Does the statute say anywhere that computer programs are not patentable? It does not. But the Supreme Court reached (mostly) that conclusion in Alice v CLS Bank, eliminating patent protection for many computer inventions.
Does the statute say anywhere that methods of titrating drug dosages to meet the needs of a patient are not patentable? Nope. But the Supreme Court did in Mayo v Prometheus, eliminating patent protection for many biotechnology inventions.
How about discoveries of new and useful genetic relationships? Verboten under Myriad Genetics.
The contagion has even spread to mechanical inventions. What’s more mechanical than a driveshaft? The Federal Circuit held that a method of tuning a driveshaft to eliminate vibration was not patentable.
Where will the courts go next and what entire disciplines will the Supreme Court determine cannot be protected by patent? Hmm. How about inventions incorporating AI or (insert next year’s new technology here)?
Patent Eligibility Restoration Act of 2024 (PERA)
The sponsors of companion bills entitled ‘Patent Eligibility Restoration Act of 2024’ (‘PERA’) pending in the U.S. House and Senate hope to create some certainty and remove some of the Supreme Court’s power to sow chaos. Under the proposed law, the exclusions from eligibility for patent would be codified and limited to five categories. No exclusions outside of those categories would be allowed, which would limit the Supreme Court’s power to come up with new theories to stop patenting of entire fields of technology.
The new statutory categories would mirror many of the exclusions developed over the years by the courts, including:
- A mathematical formula not incorporated into something else, like a machine or process.
- An economic, financial, business, social, cultural or artistic process unless the process can only be performed using a particular apparatus.
- A purely mental process performed in the human mind or a process that occurs in nature independent of human activity.
- An unmodified human gene as the gene exists in a human body would not be patentable, but a gene that is isolated, purified, or modified by human activity is NOT excluded and COULD be patentable.
- An unmodified natural material as the material exists in nature.
In a provision of particular interest to patent lawyers, PERA explicitly provides that concepts of novelty (section 102 of the patent statute) and obviousness (section 103) are completely separate and distinct from whether an invention is of a patentable subject matter (section 101). The Supreme Court has previously blended these very different concepts in a manner that this author finds to be intellectually sloppy and difficult to apply.
The proposed statute would also specify that the USPTO and the courts, in considering whether an invention is patentable subject matter, consider the invention as a whole without discounting conventional elements, largely overruling the Supreme Court’s approach in Alice, Mayo, and other cases.
Your loyal correspondent believes that the proposed bills would be a wonderful addition to the statute and would plug many of the holes that no one could have foreseen back in 1793. The bill’s chances of becoming law? Follow this link for this author’s considered opinion. The video is 1 minute, 39 seconds long.
*Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA)
— Robert Yarbrough, Esq.