Judge sounds alarm of weakened US patent system, while industry groups start amending Section 101

Is the  US patent alarm really going off or is it just
time to hit snooze ?  

The AmeriKat has been spending some time back working in her motherland recently.  No matter where she turns she hears some rhetoric about the "failing US patent system".  What is going on? While she is delving into the doomsday PR and the opposition who claim this is all tactical scaremongering, she brings news of a recent interview, for the new online IP video series Clause 8, with retired former Chief Judge of the Federal Circuit, Paul Michel.  In the interview he sounds an alarm about the condition of America’s patent system:

“I think it’s doing badly, I think it’s highly distressed, has been substantially weakened and needs serious repair, revival, and strengthening.”
His heightened sense of alarm stems from a concern that America’s patent system has been going in the wrong direction while other patent systems have been improving.  He believes that America’s system needs to be immediately improved for America to remain globally competitive.  In particular, he points out:

“While we’ve been weakening our patent system in many ways in recent years, China and other countries have been greatly upgrading their patent systems.  And patent enforcement in countries like Germany is much faster, much stronger, much cheaper, much less disruptive, and much more certain.  So, investment is shrinking here and it’s growing elsewhere because the investors follow the incentives.  If it’s too hard to get patents or defend patents or enforce patents, people who control money will invest in something other than research and development and the follow-on commercialization.  So I think the stakes are really high. We need a really a big course correction.  We need it very badly.And, we need it right now!

Judge Michel provides a stern warning
During the video interview, Judge Michel focuses on the immense uncertainty created by the U.S. Supreme Court’s patent eligibility decisions.  Because of “bad law,” he argues, “whether you get your patent or whether it’s declared ineligible” now often depends on “the luck of the draw” in America. His views echo those of previous USPTO Director David Kappos, who has repeatedly argued - and extensively documented - that it is now much easier “to get patents on software and biotechnology inventions in China and Europe than it is in the U.S.”

Watch the entire Clause 8 interview to hear Judge Michel discuss his role in the Watergate investigation, why a strong patent system is necessary for economic growth, immediate fixes that should be made by the USPTO, congressional action necessary to fix patent eligibility law in America and more.  

Patent eligibility has been a hot topic following recent US Supreme Court decisions - Mayo v Prometheus,Bilski v. KapposMyriad Genetics and Alice Corp v. CLS - so much so that AIPLA and IPO have issued legislative proposals on patent eligibility focused on pushing Section 101 into some technically neutral language.  AIPLA's legislative proposal, similar to the earlier IPO proposal, states that:
"The Supreme Court’s subjective interpretation of patent eligibility law is undermining the fundamental principles underlying the 1952 Patent Act on which our modern innovation economy rests. Section 101 of Title 35 was intended as an enabling provision, identifying particular categories of subject matter that qualified for patent protection; it was not intended to provide the standard for deciding whether a particular technical advance should receive patent protection. Sections 102, 103, and 112 set out the “conditions of patentability,” and were intended to provide a yardstick for judging novelty, non-obviousness, and the sufficiency of disclosure in the specification and claims. The Supreme Court has applied its own subjective rules of patent ineligibility that have increasingly blurred these statutory functions, causing significant uncertainty in the law and driving innovation investments abroad."
The IPO proposal (which Judge Michel expressed support for) document continues:
"After the Alice decision, the Federal Circuit quoted from Bilski that “In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Further, the Federal Circuit has recently recognized that “[a] too restrictive test for patent eligibility under 35 U.S.C. § 101 with respect to laws of nature (reflected in some of the language in Mayo) might discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena.” “[I]t is unsound to have a rule that takes [certain] inventions…out of the realm of patent-eligibility on grounds that they only claim a natural phenomenon plus conventional steps, or that they claim abstract concepts.”"
AIPLA's proposed amendment to Section 101 is as follows:
"a) Eligible Subject Matter.—Whoever invents or discovers any new and
 useful process, machine, manufacture, composition of matter, or any 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."
Or is Dave Kappos' suggestion of just scrapping the section to be preferred? Too many words, after all, are only there to be misinterpreted by the Courts.  But while Congress is tied up with the Russia investigation,  the IPKat cannot foresee a huge amount of legislative attention on this issue (no matter how important) in the immediate future.  Or at least until after former FBI Director Comey testifies....

Judge sounds alarm of weakened US patent system, while industry groups start amending Section 101 Judge sounds alarm of weakened US patent system, while industry groups start amending Section 101 Reviewed by Annsley Merelle Ward on Monday, May 22, 2017 Rating: 5


  1. Terrible proposal. Assessing patent eligibilty without regard to sections 102, 103, and 112 is absurd. This allows completely ineligible subject-matter to become patentable simply by including a conventional and known piece of apparatus e.g. a computer doing something that can be performed solely in the human mind. It should be the new and non-obvious subject-matter that is assessed for patent eligibility.

  2. Anonymous @ 09:24,

    Your post contains so many legal (and factual) errors that I scarcely know where to begin.

    First, subject matter eligibility and patentability are separate concepts.

    Second, the US law - as established by the Act of 1952 broke apart 101 and the other sections of law (102/103/112) for a reason. That reason is exactly the same reason that the current legislative suggestions are coming forth.

    Third, eligibility remains something determined for a claim as a whole, so the notion that ineligible subject-matter now "becomes eligible" has nothing to do with the legislative changes - your "concern" already IS the law in the US. The easiest example of this is the Diehr case, where everything in that case was old, except for the use of a computerized math equation. The important aspect was that the math equation was there in the sense of applied math. Your over-stated concern of "a computer doing something" is exactly the type of thing that patent law was meant to protect. It was, is, and will remain a question (for eligiblity) as to WHAT the "doing" is, and whether that "doing" falls into the realm of patent protection of the Useful Arts.

    Fourth, your position denigrates the factual situation that the known and conventional piece of apparatus is in fact improved. US patent law allows for improvement patents. In fact, a very large percentage of patents are of the improvement patent type. Your view exhibits the fallacy known in the US as the House/Morse fallacy. A television show called House has a protagonist that believed that only the first computer should have been patentable and that all improvements (via software) belonged to that first inventor. This though is the opposite of the US case of Morse which held that all future improvements were NOT captured by a first (grand) invention.

    Fifth, your view ignores the actual factual state of what software is. Software is a manufacture (in the legal sense, as it is a fabrication by the hand of man intended to be a machine component). That is the nature of what software is, and always has been. It is a "ware" that is soft, or easily modified, changed, reconfigured, and the like. In the patent sense, this "ware" is every bit a patent-equivalent to other "wares" i.e., hard and firm "wares." There is nothing that can be claimed as a software invention that also could not be set completely in hardware.

    Sixth, you conflate 102/103 with 101, and this conflation evidences an attempt to apply 101 on some per element basis. This gets each and every section of US law wrong.

    I could continue, but I hope that you see the error in your views by now.


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