Patent Eligibility - Time to Push for Fairness to Inventors

Mike Waring
Advocacy and Alliances Coordinator
AUTM



Over the past several Congresses, it has become clear that one of the major reforms innovators need is a clearer understanding of what inventions are – or are not – eligible for consideration to be patented.
 
In the wake of several Supreme Court cases (such as Mayo, Myriad and Alice) that have obfuscated what inventions may be considered for patenting, it has become vital that we have a better set of rules for determining eligibility. This is particularly true for medical diagnostics and therapeutics, where the courts have seemingly made any invention that is derived in any way from genetics “nature,” and thus not even considerable for patent protection.
 
Indeed, several years ago numerous members of the Federal Circuit (the appeals court that hears all patent cases) pleaded with the Supreme Court to clarify what previous rulings meant. Yet despite these entreaties and the public request for action, the Court has not clarified the issue. 
 
The only remedy left is for Congress to make clear by law what is and what is not eligible. And thus was born the Patent Eligibility Restoration Act, sponsored by Senate Intellectual Property Subcommittee Chair Thom Tillis (R-NC) and fellow subcommittee member Chris Coons (D-DE). This bill, S. 1546, makes a limited series of determinations of what is NOT eligible, and leaves anything else able to be considered for patent protection. Note that this does not guarantee an idea will receive a patent, as it must still stand up to further scrutiny before that occurs. But this bill will allow many more ideas to be eligible to be considered for a patent and help prevent them being left behind on the lab counter.
 
Some of your own tech transfer offices have lost out on great ideas due to this confusion. I would urge you and your staff to review cases of where such inventions were rejected out of hand by the U.S. Patent and Trademark Office. These examples can then be shared with your federal relations team to use as reasons for senators to support this legislation.
 
Chairman Tillis has scheduled a hearing for October 8 to begin the process of hopefully moving this legislation forward later this year. Those who oppose it have used false claims that the bill would allow gene patenting (clearly prohibited in the bill) or allow new drug patents to be abused and lead to higher drug prices. The fact is that neither of those eventualities will occur. Instead, the legislation will simply give patent examiners clearer instructions about how to view the eligibility of an idea. Other countries have much better systems for triaging patent applications, and now is the time for our nation to improve its own.
 
It's time for your office again to be a resource to your government relations team. Let them know your university or non-profit should support greater clarity of patent eligibility and encourage them to take that message now to senators on the Senate Judiciary Committee.