Letters To and From Senators Express Concern Over Patent Eligibility ProblemsMarch 10, 2021

The Intellectual Property Owners Association, a trade group representing patent owners, recently sent a public letter to U.S. Senators who are on the Senate Judiciary Subcommittee on Intellectual Property and on the Subcommittee on Courts, Intellectual Property and the Internet in the House, voicing concerns over the current state of the law on patent eligibility. Their letter asserted that the present ambiguities in patent eligibility “has detrimentally affected areas such as precision medicine & artificial intelligence and risks a chilling effect on further developments and investment in these critical technologies.”

The next day, ½ the members of the 8-person Intellectual Property Subcommittee sent a similar letter to the Director of the US Patent and Trademark Office stating that the US is losing its status as a leading global innovator due to recent court rulings that are inconsistent an unclear.  The Senators’ letter stated, “current eligibility jurisprudence has had a dramatic negative impact on investment, research, and innovation.” The Senators noted two Supreme Court cases in particular which they feel have contributed to the confusion on patent eligibility,  Alice Corp. v. CLS Bank International  and Mayo Collaborative Services Inc. v. Prometheus Laboratories Inc. The Senators’ letter, while bipartisan, did not include the Subcomittee’s new chair, Patrick Leahy (D- Vt.).

Over the past decade, the U.S. Supreme Court had multiple opportunities to clarify patent eligibility, but repeatedly has denied certiorari.  Now, a petition for cert is pending for another eligibility case involving an engine drive shaft patent.  See, American Axle & Manufacturing Inc. v. Neapco Holdings LLC, Supreme Court case number 20-891.  Nine amicus briefs have been filed encouraging the Court to accept this case, including one brief by Sen. Thom Tillis, R-N.C., former Federal Circuit Chief Judge Paul Michel and former USPTO Director David Kappos, who stated that the “misinterpretation of Section 101 of our patent laws has created an unintelligible hash.”

In 2019, the Senate and House Subcommittee on Intellectual Property drafted legislation in an attempt to “fix” the patent eligibility law under 35. U.S.C. 101, but the legislation never passed. The Judges on the Court of Appeals for the Federal Circuit have repeatedly agreed that clarification is needed.  See Patent Judges Agree that Patent Eligibility Law Needs Fixing: Part 1 and Patent Judges Agree that Patent Eligibility Law Needs Fixing: Part 2. With some luck, perhaps the Supreme Court will finally see that the patent eligibility law needs updating, so that inventors, patent owners, patent lawyers and practitioners, and investors will have clarity, and maybe simplicity, in patentable subject matter.

Kirk Hartung is Chair of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit www.ipmvs.com or contact Kirk directly via email at kirk.hartung@ipmvs.com.