Another 15 witnesses testified on June 5, 2019, before the Senate Judiciary Committee’s Subcommittee on Intellectual Property in the second of three days of hearings on proposed changes to sections 101 and 112 of the patent law.
For section 101, the proposed changes would allow patentability for “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” And it would reverse the current judicial trend limiting the scope of patentable subject matter, explicitly abrogating the Supreme Court’s holdings on abstract ideas, laws of nature, and natural phenomena.
For section 112, the proposed changes would provide the traditional “means for” construction for any functional elements in a claim. Any element “expressed as a specified function without the recital of structure” would cover the corresponding structure in the specification and that structure’s equivalents.
A copy of the proposed changes are available here.
The testimony from industry groups representatives largely echoed the range of views expressed in the earlier panels of past USPTO Directors, professors, and a former Chief Judge of the United States Court of Appeals for the Federal Circuit. Here are three key takeaways from two days of testimony.
First, the proposed change in patent eligible subject matter is not intended to cover human genes. Ranking Member Coons stated this plainly saying in his opening remarks, “It is not our goal, to overrule the central holding of Myriad that genes, as they exist in the human body, are not eligible for patent protection.”
Second, with arguments for and against the proposal, it appears that there may not be a single solution that would gather support from the entire patent and technology community. However, a lack of agreement from all constituencies may not prevent the legislation from moving forward. Ranking Member Coons acknowledged this outcome stating, “we recognize that it is unlikely that we will achieve consensus. Our hope is to achieve the best possible product that does the least harm in certain sectors and areas and makes the most progress in others.”
Witnesses in support of the proposed changes generally criticized the current state of the law as uncertain and unpredictable. And they argued for a stronger patent system, so inventors and investors will develop technology in the United States rather than in foreign jurisdictions. For those voicing an opinion against the changes, they focused primarily on patent trolls and high patent litigation costs, noting that the current post-Alice 101 law allows for many patents to be found invalid as a matter of law at a very early stage in litigation. Ranking member Coons highlighted this difference of views stating, “I share [the] view that we have to seek to eliminate groundless, abusive repeat litigation. But the patent system shouldn’t be viewed solely through the lens of those who mistakenly take advantage of it, but should be defined by the brilliance of inventors and for trying to help advance invention and technology.”
And third, an almost overlooked consequence of the proposed change to 112 was discussed in the final panel of the second day of testimony – that the change would likely drive patent filers to draft larger and more comprehensive patent applications which in turn would increase costs and increase the burden on the Patent Office. Because it is unclear what claim language would be considered functional under the proposal, drafters would likely hedge their bets and fill patent specifications with long recitations of equivalent structure. Such long recitations would generally not support the effort of describing the invention but would be included as a legal hedge against an unfavorable claim construction.