AIPLA Signs on to IPO s Misguided Proposal on 101

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1 Home Blogs Resource Center FAQs About Contact Us LEGISLATION GUIDES ALL DOCUMENTS PATENT DICTIONARY SYSTEMIC PROBLEMS WITH PATENTS AND SOFTWARE AIPLA Signs on to IPO s Misguided Proposal on 101 by Josh Landau May 17, Comments AIPLA, the bar association for intellectual property lawyers, just released their recommendation and report on reforming is the portion of the Patent Act that sets out what s eligible to be patented, and what isn t. AIPLA s basic complaint is that the Supreme Court has created uncertainty about what is eligible for patenting they claim their proposal will provide certainty again. The AIPLA proposal is essentially identical to the Intellectual Property Owners Association (IPO) s January proposal, which Patent Progress covered back in February. As Matt Levy said, this is a solution in search of a problem. Both proposals serve one set of interests: the interests of patent owners. Everyone else isn t going to find much to like here. AIPLA s main goal is to eliminate any real constraint on subject matter eligibility. While they claim 101 is not meant to provide the standard for deciding whether a particular technical advance should receive patent protection, a series of Supreme Court cases have outlined why 101 does exactly that. More importantly, the Court explains that 101 has to, because it protects access to the basic tools of scientific and technological work. AIPLA s proposal does not. Subscription If you would like to receive a daily e- mail with our latest posts, please subscribe via the form below. Your Name (required) Your (required) Receive daily updates Subscribe Patent All The Things AIPLA envisions essentially everything as being patentable, so long as it doesn t exist in nature independent of humans and can t be performed solely in the human mind. But if you add a computer, or even a pencil and paper, it s suddenly patentable. Patent Progress Blog Resource Center 1/5

2 by topic: NONE cases documents BCD-Decimal Conversion Table from the Benson Patent Application Invalidated in Gottschalk v. Benson So a patent on translating from binary digits to decimal digits? Patentable, as long as it s computer-implemented (even though such a patent was rejected in Gottschalk and would have set back the development of computer technology by decades.) RSS - Posts Follow us on Twitter Tweets Figure from the Morse Telegraph Patent Invalidated in the O Reilly v. Morse A patent on using electromagnetism to transmit characters over a distance? Patentable (even though Morse rejected it.) AIPLA rejects the basic cases that have guided subject-matter eligibility since the beginning of patent law. Some Obvious Problems The AIPLA proposal also changes may obtain a patent subject to the conditions and requirements of this title to shall be entitled to a patent only subject to the conditions and requirements set forth in this title. While this may sound like a small change, AIPLA itself admits that it s intended to eliminate any discretion the PTO or courts might have. Patent Progress Retweeted CCIA has a new Patent Here's his first post: patentprogress.org/2017/0 7/aip #fixpatents AIPLA Si AIPLA, th patentpro Embed View on Twit Powered by 2/5

3 Portion of AIPLA s Proposal AIPLA tries to call this an improvement, saying the days of the common law development of the so-called judicial exceptions to patent eligibility have passed. What they don t say is that this change could eliminate the existing exceptions as well. There are a number of these, including so-called obviousness-type double patenting. This rule was created to prevent patentees from obtaining extensions of their patent monopoly. Essentially, if a patent application has claims that are an obvious variation of another application (or patent) by the same inventor, then obviousness-type double patenting requires them to file a terminal disclaimer, which limits the lifespan of the new patent and prevents it from being transferred independent of the old patent. The point of the rule against obviousness-type double patenting is simple patent owners shouldn t be able to get trivial variations of their patent and extend their term by doing so. The patent bargain is exclusivity for a limited time. But the statute itself doesn t set the rule against obviousness-type double patenting; courts created this doctrine for public benefit (backstopped by 101.) And because the statute itself doesn t set the rule against obvious variations by a patent owner, the AIPLA amendment appears to eliminate it. What does that really mean? It means that, among other things, companies would have a new avenue to evergreen their patents. File within a year of original filing, or even later if the original application hasn t published yet, and you can get a year, or even more, of term extension. In some cases (such as pharmaceuticals), that extra year of exclusivity might be worth billions of dollars. AIPLA drafted this amendment to provide certainty, and it will. Adopting this will certainly result in the issuance of patents that never should have granted. Share this: 1 Related Benson Application May 18, 2017 Why IPO Is Wrong About Section 101 USPTO Real Party in Interest Roundtable 3/5

4 Similar post February 7, 2017 In "Blog Posts" January 15, 2013 In "Blog Posts" Tags: legislation patent reform patentable subject matter Patent Owners Don t All Hate IPRs 0 Comments Patent Progress 1 Login Recommend Share Sort by Best Start the discussion Be the first to comment. ALSO ON PATENT PROGRESS Myths and the STRONG Act 4 comments 2 years ago Patent Progress First, please keep it civil.second, you're excluding the petitions that are denied. You're only looking at final Tyler, TX Brags About Its Friendliness to Patent Trolls 1 comment a year ago davewisor Does any come out of Texas, that is well thought out? Subscribe d Add Disqus to your siteadd DisqusAdd Why We Need Better Patent Quality: There Are a Lot of Invalid Patents 1 comment Out 3 years There ago Michael Risch Thanks for covering this! I'm in the process of collecting data on denials of summary judgment, which should There Is a Constitutional Right at Stake in Patent Reform, But It s Not 1 comment What 2 You years Think ago Eric A "license to steal ideas from inventors" IS EXACTLY WHAT THE *SHAM* SO_CALLED 'PATENT REFORM' LEGISLATION Privacy Dictionary FAQs Resource Center Patent Progress s Guide to State Patent Legislation Patent Progress s Guide to Federal Patent Reform Legislation About Patent Progress Contact Us Contributors 4/5

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