The third and final day of testimony on draft legislation to reform the law of patent eligibility wrapped up Tuesday, June 11, 2019, with lawmakers acknowledging that there was more work to do but suggesting that a bill could be introduced as soon as after the July 4th recess. This blog post describes the current state of the legislative effort and suggests three things portfolio owners can do today to hedge risk and potentially take advantage of any changes coming down the road.
Tillis, Coons say more work to do, but expect a draft bill after the July recess
Senator Chris Coons, Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, summed up the general theme of the three days of testimony stating, “what I take away is that we need to take action. When the Former Chief Judge of the Federal Circuit, former directors of the PTO, the most-cited patent academics all agree that the law in the area of patentability is a complete mess, I think we need to attempt to bring clarity and restore the strong patent protections that have long supported our innovation economy.”
Senator Thom Tillis,chairman of the Senate Judiciary Subcommittee on Intellectual Property, and Ranking Member Coons co-authored an op-ed in The Hill in support of their effort on patent eligibility reform. That op-ed, entitled “It’s time to restore America’s patent system” is available here.
The proposed changes to section 101 would broaden patentability for “any invention or discovery that provides specific and practical utility in any field of technology through human intervention,” explicitly abrogating the Supreme Court’s holdings on abstract ideas, laws of nature, and natural phenomena. And the proposed changes to section 112 would provide the traditional “means for” construction for any functional elements in a claim, having it cover the corresponding structure in the specification and that structure’s equivalents. A copy of the proposed changes is available here.
Tuesday’s panels included members of industry. Like the earlier hearings, witnesses generally voiced support for reform of section 101 and spoke caution for changes to section 112. Witnesses arguing for the status quo generally cited the need for a narrow section 101 and the need Supreme Court’s corresponding caselaw as a mechanism to dismiss patent lawsuits, based on so-called dubious patents, early in litigation. Chairman Tillis addressed this concern head-on suggesting that an aspect of the Covered Business Method program at the Patent Trial and Appeal Board, which is set to expire in 2020, could be incorporated to address the concern of defendants facing over-broad patents.
In the end, Chairman Tillis admitted there is a lot of work to be done and that he is “convinced that we need further refinements” in the draft language. Specifically, he stated the need to clarify the utility tests so that “true abstractions, natural laws, and naturally occurring phenomena do not pass the test” and enhance the 112 proposal so “vague business methods and generic computer claims cannot pass muster and be weaponized” against smaller entities. Also, he noted a need for a stronger research-and-experimental-use exemption so basic research isn’t unduly inhibited. Despite the large task of considering all the written comments and testimony, Chairman Tillis asserted that he wants to move quickly to introduce a final bill after the end of the July 4th recess.
Three things to do right now
Because there is a possibility that some changes to sections 101 and 112 are coming, portfolio owners may want to consider actions they can take now to put their patent assets in the best possible position. Of course, any action should be appropriately balanced with the current state of the law. Here are three ideas to consider that would not hurt portfolios under the current law, but may provide a benefit if any of the proposals being discussed are ultimately passed.
1. Describe and claim inventions in the context of technology.This is an easy one because it’s a good strategy under current law and because it addresses the proposed section 101 language directly. Inventions presented in the context of their technological aspects or, to some degree, their technical effect are less likely to be considered abstract under current law and they would be more likely to be considered having “specific and practical utility in any field of technologythrough human intervention” as would be required by the proposed language.
2. Use functional claim language with proper consideration. Under the current law, patent practitioners may take for granted that claims containing functional language without the use of “mean for” or nonce words are not likely to get 112(f) treatment in claim construction. And although there was a fair amount of opposition voiced in the hearings, one cannot ignore the possibility that all functional claim language will get “means for” treatment sometime in the future. So patent drafters should carefully consider their current use of functional language–be sure that appropriate structure is described and that some appropriate alternative language is available in patent specifications for future claim amendments. This may require a little additional attention when drafting patent applications, but a more robust specification together with alternative language would likely not pose a problem under current law.
3. Consider continuation practice for important inventions with section 101 issues. While there is no guarantee that any law changes will result from this current legislative effort, portfolio owners would be remiss to ignore the possibility that a broader scope of patent eligibility may be down the road. For critically important innovations that are struggling in the Patent Office with rejections under section 101, it may be beneficial to use continuation practice to be sure that such patent families are alive and pending in the office if a change in law does indeed happen.
If you have any questions about this blog post or any of the practices described here, please feel free to reach out to Michael Koptiw at firstname.lastname@example.org.
Our other blog posts on the proposed changes to patent eligibility law are linked here:
- Second day of testimony on proposed changes to sections 101 and 112 of the patent law, Subcommittee hears from industry groups BY MICHAEL A. KOPTIW // JUNE 7TH, 2019
- Brief Summary of Senate Judiciary Committee Hearing: The State of Patent Eligibility in America: Part I BY MICHAEL A. KOPTIW // JUNE 4TH, 2019