“The lack of clarity [on patent eligibility] has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries.”
Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) sent a letter on Friday to the Acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.
As a refresher, Tillis spent all of 2019 trying to reach agreement on reforms to Section 101/ patent eligibility law, but ultimately declared it “dead on arrival” without stakeholder consensus. “I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach,” Tillis told the Intellectual Property Owners Association. “If we’re going to get anything done on this issue, everyone will have to compromise.” The biggest roadblock to consensus was on changes to 35 U.S.C. 112(f). Some stakeholders who wanted a legislative fix for 35 U.S.C. 101 were concerned that the proposed amendment to 112 would simply move rejections and invalidity arguments from 101 to 112. As a result, Tillis’ focus moved from patent reform to copyright reform last year, which culminated in a draft plan to reform the Digital Millennium Copyright Act (DMCA) in December 2020.
In the letter, the senators expressed concern about the state of patent eligibility jurisprudence, which has resulted in “a lack of consistency and clarity” in patent eligibility law. They said that, in order for the United States to continue leading in technology sectors such as quantum computing, artificial intelligence, 5G, the internet of things, biopharmaceuticals, precision medicine, and life sciences, “we can no longer continue to ignore the fact that current eligibility jurisprudence has had a dramatic negative impact on investment, research, and innovation.” The letter continued:
The lack of clarity has not only discouraged investment in critical emerging technologies, but also led the courts to foreclose protection entirely for certain important inventions in the diagnostics, biopharmaceutical, and life sciences industries.
The senators are specifically calling for data on how cases like Alice Corp. v. CLS Bank International and Mayo Collaborative Services Inc. v. Prometheus Laboratories Inc. have “adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.”
The deadline for Hirshfeld to submit a report is March 5, 2022, so it doesn’t seem likely there will be much congressional movement before that to address patent eligibility. But presumably, a targeted information gathering process will soon begin.
Brian Pomper, Executive Director of the Innovation Alliance, said of the letter: “These Senators are exactly right to warn about the lack of consistency and clarity in patent eligibility law. The status quo is undermining U.S. leadership in global innovation and needs to be addressed.”