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Critical fix to America’s patent system may be in the offing

By Jesse Schwartz
Published: April 2nd, 2019

An IP Watchdog post by patent law expert Gene Quinn offers some optimism for patentees, noting that legislative changes are likely coming that could reverse a 12-year-long trend that has served to weaken the patent system beyond recognition. In particular, the problem – and the potential solutions – revolve around Section 101, Quinn says.

Supreme Court decisions like KSR, Bilski, Myriad, Mayo and Alice and Oil States have gutted the ability to protect many inventions. “So bad and uncertain has the law of patent eligibility become that, for example, the Cleveland Clinic and other major institutions are beginning to refrain from researching and developing innovative medical diagnostics because they cannot be patented,” Quinn asserts. “And because they cannot be patented, this means investors are unwilling to provide the capital necessary to take the exciting early stage innovative research and turn it into developed medical diagnostics that can be deployed in hospitals and laboratories. This should send shivers down the spine of every American.”

Quinn argues that “the U.S. patent system has been inhibiting innovation, not enhancing or promoting innovation as the Constitution commands.” But a bipartisan group in Congress is working on a legislative fix that could profoundly improve things, he adds, and it seems that a bill with a real chance of passing could be introduced within months.

Sen. Chris Coons (D-DE), Sen. Thom Tillis (R-NC), Rep. Doug Collins (R-GA) and Rep. Hank Johnson (D-GA) are working within a a four-principle framework for addressing Section 101 that includes the following, Quinn reports:

  1. Patent eligibility should not depend on the existence of related technology or the current state of the art. As long as it meets other requirement — novelty, obviousness, enablement, written description, and definiteness – “any useful invention should be eligible for protection regardless of whether it is new or old, conventional, known, or using other terms relevant to determining obviousness or anticipation.”
  2. To determine eligibility of patent claims, it should be impermissible to carve up a claim into different parts and assess the eligibility of each claim separately. Instead, eligibility should consider the claimed invention as a whole.
  3. Diagnostic and life science technologies should be eligible for patent protection if they meet statutory requirement and should not be considered a law of nature, natural phenomena, or otherwise patent ineligible subject matter.
  4. Reforms to Section 101 should statutorily codify any definition and/or exception(s) to eligibility. “Any statutory exception(s) should not use the existing judicial exceptions of abstract ideas, laws of nature, or natural phenomena. Any statutory exceptions should be the sole and exclusive basis for excluding subject matter from eligibility and may not be expanded upon by courts. Any definition of eligible subject matter should be adaptive to include new technologies not yet invented.”

According to Quinn, legislation that adhered to this framework “would mean a return to patent laws that encourage entrepreneurial risk-taking, which fosters innovation among the many individuals and start-up companies that have always dared to dream about the future and explore different and exciting ways to envision that future.”

He adds that “given the delay between filing a patent application, a patent ultimately being awarded, and a patent being litigated or licensed, it seems likely that patent applications filed today will enjoy a much brighter future than those filed during the darker days of the past decade.”

Source: IP Watchdog

Posted under: Tech Transfer e-News

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