George Mason University Antonin Scalia Law School

IPO Publishes Analysis of Recently Released Legislative Proposal

dictionary entry for the word "innovate"Last week, the Intellectual Property Owners Association (IPO) released a proposed revision to the section of the Patent Act that defines the subject matter eligible for patenting.  I discussed the importance of the proposal, noting that there have been several calls for legislative solutions to overly restrictive understanding of what inventions are eligible for patents.

IPO has followed their proposal with a detailed analysis of what the revisions accomplish.  The most important contribution of the proposal is its reaffirmation of the original congressional intent: subject matter eligibility is meant to be a coarse filter, and issues related to the breadth of the claims are dealt with by statutory sections covering novelty, nonobviousess, enablement and the like.  Furthermore, any exceptions to the categories of patentable subject matter will be determined by statute.  Consequently, vague judicial exceptions and the subjective notion of “inventive concept” are replaced by easily applied statutory rules.

IPO’s analysis also discusses the vast harms that have been caused by overly restricting the kinds of inventions that are patentable. In addition to examples I have discussed previously, such as an oil rig, IPO notes that courts have found forehead scanning thermometers and fighter pilot helmets ineligible for patenting.  CPIP Senior Scholar Chris Holman has discussed how these restrictions on patentability harm the development of diagnostic tests and CPIP Founder Adam Mossoff led a Supreme Court amicus brief with other CPIP Senior Scholars in support of the petitioner in Sequenom v. Ariosa, which involved a highly innovative method of using maternal blood to detect fetal abnormalities.

The absurdity of recent patentability decisions and the general trend in court decisions away from the statute demonstrates the need for a fix. IPO’s proposal provides this fix and their follow on analysis demonstrates how this fix will work.