Patentability and Patent Protection: Is the Pendulum Starting to Swing Back?

March 23, 2018
Post by Oliver P. Couture, Ph.D.

The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to 12th place out of 50 economies in recent years. This places the US equal with Italy and just in front of Hungary, with several EU countries, Switzerland, South Korea, Japan, and Singapore ranking higher. According the US Chamber, this drop is due to two issues in the US patent system: patentability requirements and patent opposition.

                The lower score of patentability requirements is a result of inconsistently and difficulty in applying the Supreme Court decisions in Myriad, Mayo, and Alice. The Index states these decisions have “seriously undermin[ed] the long-standing world-class innovation environment and threatens the nation’s global competitiveness.” Further, the Index points toward the disproportionately high rate of patent oppositions, specifically IPRs, and low rates of cases surviving with all claims being considered patentable as causing a lack of predictability for patent owners compared to other post-grant oppositions systems. This in turn has lead to additionally litigation, costs, and risks for patent owners.

                However, recent developments at both the Federal Circuit and Congress may start to push back on both the inconsistencies in patentability requirements and the high rate of patent oppositions with low outcomes. A series of cases this year,Berkheimer, Aatrix, and Exergen, have resulted in overturning the District Court’s holding of invalidity on factual analysis, specifically if claims were not “well-understood, routine, and conventional activities,” they are patentable subject matter. 

                This week the House has also introduced a bill: the STRONGER Patents Act of 2018. The Act mirrors the bill introduced in the Senate last year and focuses mainly on post grant procedures. Several of the proposed changes aim to harmonize claim construction with litigation, while making it harder for people without standing to challenge a patent, eliminate serial challenges, give priority to federal court, and make it easier to amend claims.

                Thus, there is some movement at both the judicial and legislative levels to address some of the concerns of patent owners and may start alleviate some of the uncertainty in patentability and reduce the high rate of patent oppositions.

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