The ABA Supports an Amendment to Section 101 of the U.S. Patent Act
{3:20 minutes to read} The United States Patent and Trademark Office (USPTO) asked for public comments on patent subject matter eligibility in the Federal Register of October 2016.
In response, the American Bar Association (ABA) sent a letter to Michelle Lee, then Director of the USPTO, stating to be in support of an amendment to clarify Section 101 of the U.S. Patent Act.
In its letter, the ABA recommended that an amendment to Section 101, which governs subject matter eligibility, should “clarify that useful inventions as defined by each and every limitation of the claims of a patent satisfy the patent eligibility requirements of Section 101 so long as the claims do not preempt the use by others of all practical applications of laws of nature, natural phenomena or abstract ideas.”
The letter also seeked to “clarify that the determination of patent eligibility under Section 101 is independent of patentability under other sections of the patent statute.”
The U.S.Supreme Court has issued several decisions recently, such as Alice Corp v CLS Bank (in which it ruled that computer software based on an abstract idea may be ineligible for a patent) that have concerned subject matter eligibility, but none of these decisions have sufficiently clarified matters.
The ABA was not the only organization to speak up regarding the clarification to Section 101. Earlier in the year, the Intellectual Property Owners Association (IPO) also submitted comments to the USPTO requesting changes.
The IPO’s proposed legislation was similar to the ABA’s ideas in many ways, specifically regarding keeping issues of novelty and obviousness out of the eligibility determination, but there were also differences. The ABA’s proposal focused more on disallowing patents that preempt the use of natural phenomena and abstract ideas, while the IPO’s sought to define what types of inventions are not patent-eligible.
Silvia Salvadori, PhD
(212) 897-1938