The Software IP Report

Patent-Eligibility Legislative Reform Is Not Coming Soon

By Charles Bieneman

Categories: 35 U.S.C. § 101, Patent Eligibility, The Software IP Report

In an interview published by the Intellectual Property Owner’s Association, Senator Thom Tillis (R-N.C.) addressed the question many have asked: is Congress going to fix the § 101 patent-eligibility mess? The answer? Not any time soon: “I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress.”

In 2017, the IPO put forth a proposed revision to 35 U.S.C. § 101, as did the American Intellectual Property Association, and in 2018 these two leading organizations agreed on a “Joint AIPLA-IPO Proposal on Patent Eligibility.” The basic idea under the AIPLA/IPO proposal is that everything except laws of nature and mental steps would be patent-eligible. This proposal would certainly relax the Mayo/Alice gateway– and presumably would have the benefit of making § 101 jurisprudence simpler and more straightforward to apply.

But nothing is simple. The “vast majority” Senate Judiciary Committee’s Subcommittee on Intellectual Property, says Senator Tillis, “agreed that our current eligibility standard is unworkable,” and negatively impacts American research and development. But there are those who are concerned about the possibility for litigation abuse, and inhibiting fundamental scientific research, that would come from changing the § 101 patent-eligibility standard.

The entire interview – linked to above – is worth reading. The IP subcommittee is focusing on counterfeiting issues, and intends to visit copyright issues, especially the Digital Millennium Copyright Act, in 2020. But revisions to 35 U.S.C. § 101 are pretty clearly off the table until at least after the next election.