July 25, 2018

ABA’s IP Law section releases comments to USPTO to clarify patent subject matter eligibility

WASHINGTON, July 25, 2018 — The American Bar Association Section of Intellectual Property Law (ABA-IPL) sent a letter to Director Andrei Iancu of the U.S. Patent and Trademark Office identifying a set of principles to guide any future legislative work undertaken to clarify patent subject matter eligibility, under Section 101 of the Patent Act.

The views expressed in the letter, which was sent on July 23 and can be viewed here, have not been approved by the House of Delegates or the Board of Governors of the American Bar Association and should not be construed as representing the policy of the ABA.

In communicating these principles, ABA-IPL noted its agreement with the American Intellectual Property Law Association and the Intellectual Property Owners Association. The three organizations believe that recent Supreme Court jurisprudence with respect to patents has impacted the certainty and reliability of the U.S. patent system and that it is time for Congress to consider a legislative solution.

ABA-IPL Chair Scott F. Partridge noted that in many public appearances Director Iancu has expressed concern about the effects of recent case law on patents. Partridge said the three organizations have worked to develop a common set of principles that should be reflected in any legislative proposal.

The letter emphasized, “patent eligibility determinations are to be made without ignoring claim limitations (either by treating them as known or conventional) or focusing solely on an inventive concept, and that eligibility shall not be negated based on considerations of patentability defined elsewhere in the Patent Act, such as anticipation and/or obviousness.”

Partridge concluded, “Development of these common principles is an important step toward a solution to the state of current §101 jurisprudence.”

The 18,000-member ABA  Section of Intellectual Property Law provides the highest quality information, analysis and practice tools to intellectual property lawyers, and serves as the thoughtful source of information and commentary for policymakers as they consider legislation affecting the law and regulations in intellectual property matters. ABA-IPL is respected and known as the premier resource for knowledge in this increasingly important and complex area of law.

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