by Dennis Crouch
The Intellectual Property Owners Association (IPO) is run primarily by a group of 50 top intellectual property counsel (usually patent-focused) from many of the largest global innovative companies – all deeply involved in the patent system as patent holders and many as accused-infringers as well. Patent attorneys from various law firms serve in a support role for the organization. The IPO created a special 101 legislative task force headed by IBM’s Marian Underweiser with Vice-Support from Bob Sachs (Fenwick & the BilskiBlog) whose proposal has now been released and fully adopted by the IPO Board.
IPO’s proposed a particular statutory amendment that would limit the eligibility question to whether “the claimed invention as a whole, as understood by [PHOSITA], exists in nature independently of and prior to any human activity, or exists solely in the human mind.” The proposal would seemingly flip the outcomes Alice, Mayo, and Bilski, although it is unclear to me how the statute treats a situation where a covered embodiment could exist solely in the human mind, but the invention as a whole also contemplates out-of-mind activities. The proposal specifically states that eligibility “is not impacted by . . . the claimed invention’s inventive concept.” Rather, the focus is solely on whether the claim-as-a-whole (1) “already exists in nature independently of and prior to any human activity” or (2) “exists solely in the human mind.” The proposed amendment further spells out that the entitlement to a patent is subject “only” to the limitations found in the Patent Statute.
IPO Proposed Amendment:
101 Inventions patentable.
101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any
new anduseful process, machine, manufacture, orcomposition of matter, or any new anduseful improvement thereto, shall be entitled to thereof, may obtaina patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Title of this title.
101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.
101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.
There are many important paths of discussion stemming from this proposal. One is that proposal’s focus would remove subject matter eligibility from the courts policy-toolkit and instead make the doctrine fully a creature of statute. Although not required for its proposed change, the Board also proposed eliminating the word “new” from the requirements of Section 101 — further elimination of the requirement that the individual claiming to be the inventor actually invented. The proposal includes several further subtle (and not-so-subtle) changes including “entitlement” to a patent of your claimed invention; express separation of 101 analysis from “the requirements or conditions of sections 102, 103, and 112;” statement that eligibility is not impacted by “the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.” It is also unclear what becomes of the utility doctrine.
More to come on this.