PublishedMay 17, 2017

AIPLA Signs on to IPO’s Misguided Proposal on § 101

AIPLA, the bar association for intellectual property lawyers, just released their recommendation and report on reforming § 101.  § 101 is the portion of the Patent Act that sets out what’s eligible to be patented, and what isn’t.  AIPLA’s basic complaint is that the Supreme Court has created uncertainty about what is eligible for patenting — they claim their proposal will provide certainty again.

The AIPLA proposal is essentially identical to the Intellectual Property Owners Association (IPO)’s January proposal, which Patent Progress covered back in February.  As Matt Levy said, “this is a solution in search of a problem.”  Both proposals serve one set of interests: the interests of patent owners.  Everyone else isn’t going to find much to like here.

AIPLA’s main goal is to eliminate any real constraint on subject matter eligibility.  While they claim § 101 “is not meant to provide the standard for deciding whether a particular technical advance should receive patent protection,” a series of Supreme Court cases have outlined why § 101 does exactly that.  More importantly, the Court explains that § 101 has to, because it protects access to “the basic tools of scientific and technological work.”

AIPLA’s proposal does not.

Patent All The Things

AIPLA envisions essentially everything as being patentable, so long as it doesn’t exist in nature independent of humans and can’t be performed solely in the human mind.  But if you add a computer, or even a pencil and paper, it’s suddenly patentable.

BCD-Decimal Conversion Table from the Benson Patent Application (Gottschalk v. Benson)
BCD-Decimal Conversion Table from the Benson Patent Application Invalidated in Gottschalk v. Benson

So a patent on translating from binary digits to decimal digits?  Patentable, as long as it’s computer-implemented (even though such a patent was rejected in Gottschalk and would have set back the development of computer technology by decades.)  

Figure from the Morse Telegraph Patent Invalidated in the O'Reilly v. Morse
Figure from the Morse Telegraph Patent Invalidated in the O’Reilly v. Morse

A patent on using electromagnetism to transmit characters over a distance?  Patentable (even though Morse rejected it.)  AIPLA rejects the basic cases that have guided subject-matter eligibility since the beginning of patent law.

Some Obvious Problems

The AIPLA proposal also changes “may obtain a patent subject to the conditions and requirements of this title” to “shall be entitled to a patent only subject to the conditions and requirements set forth in this title.”  While this may sound like a small change, AIPLA itself admits that it’s intended to eliminate any discretion the PTO or courts might have.

Portion of AIPLA's Proposal
Portion of AIPLA’s Proposal

AIPLA tries to call this an improvement, saying “the days of the common law development of the so-called judicial exceptions to patent eligibility have passed.”  

What they don’t say is that this change could eliminate the existing exceptions as well.  There are a number of these, including so-called “obviousness-type double patenting.”  This rule was created to prevent patentees from obtaining extensions of their patent monopoly.  Essentially, if a patent application has claims that are an obvious variation of another application (or patent) by the same inventor, then obviousness-type double patenting requires them to file a “terminal disclaimer,” which limits the lifespan of the new patent and prevents it from being transferred independent of the old patent.

The point of the rule against obviousness-type double patenting is simple — patent owners shouldn’t be able to get trivial variations of their patent and extend their term by doing so.  The patent bargain is exclusivity for a limited time.  But the statute itself doesn’t set the rule against obviousness-type double patenting; courts created this doctrine for public benefit (backstopped by § 101.)  And because the statute itself doesn’t set the rule against obvious variations by a patent owner, the AIPLA amendment appears to eliminate it.

What does that really mean?  It means that, among other things, companies would have a new avenue to evergreen their patents.  File within a year of original filing, or even later if the original application hasn’t published yet, and you can get a year, or even more, of term extension.  In some cases (such as pharmaceuticals), that extra year of exclusivity might be worth billions of dollars.

AIPLA drafted this amendment to provide certainty, and it will.  Adopting this will certainly result in the issuance of patents that never should have granted.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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