The IP law section of the American Bar Association (ABA) outlined its recommended revisions of 35 USC, section 101 in a recent letter to the US Patent and Trademark Office (USPTO).The association provided its interpretation and suggested revisions of section 101, which covers patent subject matter eligibility and has been the focus of a number of recent US Supreme Court decisions.In a previous letter to the USPTO, sent in January, the association explained that, until recently, the Supreme Court had established a patent eligibility test that “generally struck a proper balance between preventing the patenting of pure laws of nature, natural phenomena, or abstract ideas themselves, while authorizing the patenting of their application in particular fields”.
In a previous letter to the USPTO, sent in January, the association explained that, until recently, the Supreme Court had established a patent eligibility test that “generally struck a proper balance between preventing the patenting of pure laws of nature, natural phenomena, or abstract ideas themselves, while authorizing the patenting of their application in particular fields”.
Courts have injected ambiguity
According to ABA, recent opinions from court have “injected ambiguity” into eligibility determination. It explained that ambiguity is created by supreme court requiring courts and the USPTO to apply criteria such as “well known” , “routine” , “conventional or obvious” , factors that were previously relevant to novelty and obviousness in order to ignore limitation and render a claim patent ineligible. The association claimed that decision such as Alice vs. CLS bank and Mayo and Prometheus have led the lower courts to lose sights of the fundamental “preemption concern “that has driven patent eligibility jurisprudence.
Revision of section 101
It does this while leaving determination of patentability, including inventive concept, to other provision of patent statue. The amendment clarifies that “ useful invention as defined by each and every limitation of the claims of patent satisfy the eligibility requirement of section 101, so long as the claim does not preempt the use by others of all practical application of law of nature , natural phenomenon or abstract ideas.”
It also clarifies that the determination of patent eligibility under section 101 is independent of patentability under other sections of the statue.
Over the past 50 years of eligibility jurisprudence, the supreme court ha stated that its fundamental concern is the potential preemption of “the use of building blocks like law of nature, natural phenomenon, and abstract ideas”, said association.
