IP Law Daily, PATENT NEWS: Witnesses testify before Senate panel on patent eligibility reform bill, (Jan 26, 2024)

By Brian Craig, J.D.

Former USPTO Directors David Kappos and Andrei Iancu urged the subcommittee to adopt the Patent Eligibility Restoration Act of 2023.

With contrasting viewpoints on whether the U.S. patent eligibility system needs reform, the Senate Judiciary Committee’s Subcommittee on Intellectual Property has held a hearing on the bipartisan Patent Eligibility Restoration Act of 2023 (PERA). The Senators heard testimony from eight witnesses, including former USPTO Directors David Kappos and Andrei Iancu, who both urged passage of the bill. While many witnesses supported adoption of the bill, other witnesses expressed opposition to the bill introduced by Senators Chris Coons (D-DE) and Thom Tillis (R-NC) that aims to modernize the patent eligibility system.

Introduced in June 2023, PERA (S.2140) (covered by IP Law Dailyhere) would eliminate all judicially-created exceptions to U.S. patent eligibility law, would overturn the U.S. Supreme Court’s Alice/Mayo framework, and codify specific exclusions from eligibility. The bill aims to revitalize U.S. innovation in critical technologies, such as medical diagnostics and artificial intelligence. The hearing’s panelists consisted of attorneys and former executive branch officials, who debated the bill’s merits.

Former USPTO Director Kappos (testimony) strongly urged passage of the measure. “Patent eligibility law in the United States is in a state of disarray that has led to inconsistent court decisions, deep concern for the availability and reliability of patent protection in the innovative, investment and legal communities, and innovation-killing outcomes in patent prosecution and litigation,” said Kappos. “PERA will . . . stop the confusion that has resulted in a jumble of all tests for an award of patent protection into one hairball that cannot sensibly be applied.”

Kappos added, “Strong and predictable patent protection is vital for America’s success. The current Section 101 regime is broken and the courts have been running unguided for too long. This issue cannot be ignored any longer. It is time for Congress to fix America’s law of patent subject matter eligibility.”

Former USPTO Director Iancu (testimony) agreed with Kappos that the patent eligibility law needs modernization. “The state of Section 101 law has sown confusion amongst participants in the intellectual property space, has stymied research and development, investment, and innovation, and has hurt competition and the U.S. economy,” said Iancu. “Thankfully, the necessary reforms can be accomplished through PERA. These reforms will provide much needed clarity, predictability, and reliability to the U.S. patent system.”

“All human invention is the manipulation of nature towards practical uses by humans on this planet. We can exclude nature itself but any human intervention and manipulation, that is what human innovation and engineering is and it should be eligible for a patent,” Iancu said. “Congress will provide clarity to participants in the intellectual property space, industry, and the markets. Congress also will end the guessing game caused by current jurisprudence.”

Other witnesses also endorsed passage of the bill but with some proposed amendments. Courtenay C. Brinckerhoff (testimony), a patent lawyer and partner with Foley & Lardner LLP, said, “I think PERA would go a long way towards addressing and resolving these problems with the current state of U.S. patent eligibility. By eliminating the judicial exceptions and requiring a statutory-based analysis limited to specific exceptions, PERA would provide a more predictable framework for evaluating patents under§101.” Brinkerhoff suggested an amendment to clarify the effective of PERA saying, “I think it will be important to make clear whether the PERA version of§101 will apply immediately and retroactively to all U.S. patents and pending U.S. patent applications upon its date of enactment, or if it will have a more limited, forward-looking effect.”

Some industry groups representing companies who rely on patents to protect their inventions also support the bill. Philip S. Johnson (testimony), Steering Committee Chair of the Coalition for 21st Century Patent Reform in Washington, DC, whose organization strongly supports measure, said that passage of PERA is “critical to the protection of inventions in the field of personalized medicine, diagnostics, and therapeutics, as well as in many other fields whose inventions rely on uses of naturally occurring starting materials.”

But not all of the witnesses advocated the passage of PERA. Richard L. Blaylock, (testimony) a patent lawyer and partner with Pillsbury, Winthrop Shaw Pittman LLP, on behalf of Invitae Corporation, a genetics company, opposed the bill as currently introduced. Blaylock said that the bill “will unintentionally stifle innovation and harm patient care in the fields of diagnostic genetic testing and precision medicine.” Blaylock continued, “PERA is both unnecessary and harmful to the genetic testing industry, patient access to self-knowledge regarding the significance of their genetic characteristics, and the evolution and delivery of precision medicine.”

David W. Jones (testimony), executive director of the High Tech Inventors Alliance which includes big technology companies such as Google, Amazon, and Microsoft, indicated that his organization is skeptical that legislative changes are necessary to reform current patent eligibility jurisprudence. “The current patent eligibility jurisprudence is neither unpredictable in its outcomes nor harmful to venture capital or R&D investments,” Jones told the committee. “PERA would create greater uncertainty while inappropriately expanding patent eligibility to non-technological innovation.”

Meanwhile, Mark Deem (testimony), and a named inventor on over 250 issued and pending U.S. patents, advocated the quick passage of PERA. Deem said that the bill will “restore more clarity to the patent process, and remove one damaging and unnecessary headwind that stands between inventors, physicians, and patients.”

Adam Mossoff (testimony), a law professor at the Antonin Scalia Law School at George Mason University, encouraged Senators to adopt the bill. “The U.S. patent system has been under an extensive amount of stress from all branches of the federal government for over 15 years,” said Mossoff. “Congress should enact PERA, abrogating the Alice-Mayo inquiry and reestablishing the longstanding patent eligibility doctrine as only a threshold inquiry among the several distinct and separately enforceable patentability requirements.” Mossoff concluded his remarks by saying that PERA will “return the U.S. back to the ‘gold standard’ patent system that created and sustained U.S. technological leadership for the past two centuries.”

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