June 20, 2019

What Does Patent Eligibility Mean for Industry?

Congress is considering important patent eligibility reforms that will have far-reaching implications for innovative industries like the technology, life sciences, and medical diagnostic sectors. Earlier this month, the Senate Judiciary Subcommittee on Intellectual Property held a series of hearings on The State of Patent Eligibility in America. Senators Thom Tillis and Chris Coons, the Chair and Ranking Member of the Subcommittee, convened these hearings after hosting a series of roundtables with stakeholders to address ambiguity in the Supreme Court and Federal Circuit decisions addressing what inventions are eligible for patent protection.

The issue these hearings explored arose from section 101 of the patent statute (35 U.S.C. § 101), which defines the types of inventions that are eligible for patent protection and thereby the contours of our innovation ecosystem. For something to be patented, it has to be new, non-obvious, and useful, with the only exceptions being laws of nature, natural phenomena, and abstract ideas. However, recent Supreme Court decisions broadened these exceptions, making it harder to patent things like medical diagnostic tests, since courts found that these inventions specifying correlations between compounds in the bodies and diseases are merely “natural phenomena.” 

For instance, the Federal Circuit struck down patents for a blood test that revolutionized prenatal genetic testing, observing that the Supreme Court’s test for patent eligibility must be applied so aggressively as to require lower courts to hold that “groundbreaking, innovative, or even brilliant discoveries” can be excluded from patent protection. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 at 1381 (Fed. Cir. 2015) (Linn, J., concurring).

At the same time, certain software technology has been deemed ineligible for patents as being only “mathematical algorithms” and therefore just “abstract ideas.”  

The current uncertainty and unpredictability about what types of inventions qualify at the most basic level for patenting undermine the U.S. patent system and create unacceptable risks to investments American entrepreneurs choose to make in innovation. 

During the hearings, the Senators on the Intellectual Property Subcommittee heard from 45 witnesses on this issue, including the ABA. Scott Partridge, the Immediate Past Chair of the ABA’s Section of Intellectual Property Law, testified on behalf of the ABA to provide general comments on the legislative reform proposed by Senators Tillis and Coons and Representatives Collins, Johnson, and Stivers.The ABA supports the current legislative effort to provide certainty and predictability in patent eligibility law to thereby reestablish appropriate incentives to innovation in all fields of technology.  

To encourage your representatives in Congress to support the legislative reform proposed by Senators Tillis and Coons with Representatives Collins, Johnson, and Stivers regarding patent eligibility, please click here. For further questions, please contact Kira Alvarez in the ABA Government Affairs Office, at kira.alvarez@americanbar.org.

To see text of the proposed changes, please click here