Third time lucky? The American Intellectual Property Lawyers Association (AIPLA) has just released a proposal to change the law on what kinds of inventions may be patented. This is the third call for a change of the relevant law in almost as many months, following a proposed resolution by the Intellectual Property Owners' Association and a letter by the American Bar Association Section of Intellectual Property Law.
The contentious law is Section 101 of the US Patent Act, which determines what kinds of inventions are eligible for patent protection. A lack of clarity in the statute has led to the development of a controversial body of case law, which is summarised in AIPLA’s proposal and which we have previously commented on here.
AIPLA’s proposed changes are shown below in manuscript:
35 U.S.C. § 101—Inventions Patentable
(a) Eligible Subject Matter.—Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain shall be entitled to a patent therefor, subject only to the conditions and requirements of set forth in this title.
(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.
(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.
Thus, the proposal calls for an objective and evidence-based approach to the question of patent eligibility. It also aims to draw a clear line between patent eligibility and the requirements for patentability, such as novelty, non-obviousness and sufficiency of disclosure.
If adopted, the law changes would, no doubt, have a big impact, particularly with regard to diagnostic methods and software-implemented methods.
It remains to be seen whether and how US congress will react to these proposals. Meanwhile, a prudent strategy for patent applicants would be to maintain a pending US patent application in relation to any important inventions in affected fields, to maintain flexibility in the event of a law change.
Congress must intervene and return the law to what the 1952 Patent Act meant to provide: an objective, evidence-based analysis for awarding patent protection.