[Ip-health] Senator Thom Tills on 101 reform plans, bill expected this summer

James Love james.love at keionline.org
Thu Apr 4 08:31:00 PDT 2019


https://www.iam-media.com/law-policy/key-us-legislator-lays-out-101-reform-plans-bill-expected-summer

Key US legislator lays out 101 reform plans with bill expected this summer

Richard Lloyd
March 26, 2019

Speaking at an event in Washington DC this morning, Senator Thom Tillis,
chair of the US Senate’s IP subcommittee, laid out a roadmap for reform of
section 101 of the patent statute and revealed that an outline of a bill is
expected next month, with a draft due in the summer.

Tillis described the law around 101 as a mess and warned that the US would
fall behind Europe and Asia in innovation, R&D and entrepreneurship if
action is not taken.

Together with his Democrat colleague Senator Chris Coons, Tillis has hosted
three roundtables since last December, bringing together various IP
stakeholders to discuss how 101 reform should he handled. In his speech
Tillis revealed that in the most recent meeting held last week, the
participants had agreed to four guiding principles that he said would shape
legislative efforts.

. . .


Tillis stressed that after years of court decisions having a profound
impact on section 101, there is a clear need for Congressional action. “We
now have courts instead of Congress deciding what industries, what
technologies are now worthy of protection,” he asserted. “That regime can’t
continue if we want America to continue to be the world leader in
innovation and a leader in the global innovation economy.”

Here are the principles as articulated by Tillis this morning:

Any reform to ensure the availability of patent protection isn’t determined
based on the existence of related technology. In other words subject to
meeting all other requirements of the patent statute, any useful invention
should be eligible for patent protection regardless of whether it is new,
old, conventional, known or, using other terms, relevant to determining
obviousness or anticipation.

When assessing the patentability of patent claims, those claims must be
construed as a whole with each limitation in a claim given equal weight and
not dismissed or discounted as routine, known, conventional, mere data
collection or post-solution activity or the like. In other words
eligibility must consider the claimed invention as a whole.

Diagnostic and life science technology should be eligible for patent
protection per se, subject to meeting other statutory requirements.
Any reform should statutorily codify definitions or a list of exceptions
and limitations to patent eligibility – I think we need to be specific. Any
statutory list of ineligible subject matter should not be defined using
existing judicial exceptions or abstract ideas, laws of nature or natural
phenomenon. Any list of statutory exceptions should be the sole and
exclusive basis for excluding subject matter from eligibility and the list
may not be extended by the courts.

 . . .



. . .

 the Court of Appeals for the Federal Circuit and, possibly, the Supreme
Court will weigh in on additional 101 cases. Last week the Supreme Court
asked for the views of the Solicitor General in Hikma Pharmaceuticals v
Vanda Pharmaceuticals in a case which asks “Whether patents that claim a
method of medically treating a patient automatically satisfy Section 101 of
the Patent Act, even if this apply a natural law using only routine and
conventional steps”.

. . .

In further comments, the senator from North Carolina also raised the
prospect of codifying some of the reforms introduced by US Patent and
Trademark Office (USPTO) Director Andrei Iancu over the last year. While he
didn’t single out one reform, that might include some of the changes Iancu
has introduced at the Patent Trial and Appeal Board (PTAB), such as the
shift in the claim construction standard from broadest reasonable
interpretation to the Phillips standard.

. . .


-- 
James Love.  Knowledge Ecology International
U.S. Mobile +1.202.361.3040
U.S. office phone +1.202.332.2670
http://www.keionline.org <http://www.keionline.org/donate.html>
twitter.com/jamie_love


-- 
James Love.  Knowledge Ecology International
U.S. Mobile +1.202.361.3040
U.S. office phone +1.202.332.2670
http://www.keionline.org <http://www.keionline.org/donate.html>
twitter.com/jamie_love


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