SCOTUS Let Us Down Again, So Congress Should Move PERA

For the umpteenth time, the U.S. Supreme Court has declined to take a patent eligibility case on appeal. SCOTUS denied certiorari to Audio Evolution Diagnostics v. United States et al. on June 6.

The U.S. Court of Federal Claims invalidated all of AED’s patent claims, “conflating novelty and obviousness under 35 U.S.C. §§ 102 and 103 with patent eligibility under § 101,” according to Audio Evolution’s SCOTUS petition. Then the U.S. Court of Appeals for the Federal Circuit dialed it in once again, invoking Federal Circuit Rule 36 and disposing of the appeal with summary affirmance—one word—foregoing yet another opportunity to provide parties, inventors and others guidance on where the line lies between eligibility and ineligibility.

The Courts Have Tapped Out

The High Court has set a poor example for lower courts. It has ignored plain statutory language and legislated from the bench. In Alice Corp. v. CLS Bank, SCOTUS deemed a computer-implemented invention to be an abstract idea. In Mayo Collaborative Services v. Prometheus Laboratories, the court brought the patentability criteria of novelty and nonobviousness into the threshold patent eligibility determination, mixing oil and water.

The justices seem satisfied to leave intact their convoluted, confusing 101 jurisprudence that has led to such uncertainty, unpredictability and lack of clarity, but that is a very costly decision for our country. The problem is that SCOTUS’s Alice-Mayo framework for determining whether certain subject matter falls into one of Section 101’s broad eligibility categories or not leaves courts disposed to deny eligibility to bonafide inventions. U.S. courts have done extensive damage to patents related to medical diagnostics and computer-implemented inventions.

The Consequences are Coming

These swings and a miss include areas of invention that formerly were patent-eligible in the United States and that are patent-eligible today in Europe, China and elsewhere. As a witness, a patent attorney, told the Senate Judiciary Committee’s Intellectual Property Subcommittee last year, “other countries have not followed the U.S. very far down this road of patent ineligibility.” Moreover, she observed the resulting “imbalance in intellectual property rights that can be obtained in the U.S. versus elsewhere.” The domestic judicial chaos around Section 101 puts American innovation, competitiveness, and economic and national security at stake.

The toll of judicially created exceptions that block U.S. patent eligibility continues to mount—not just one court case at a time, but by inventors, researchers, investors and R&D firms choosing not to pursue certain cutting-edge, promising projects. As former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, testifying at the same Senate IP hearing, put it, “the state of Section 101 law has sown confusion amongst participants in the intellectual property space, has stymied research and development, investment, and innovation, and has hurt competition and the U.S. economy.”

Sobering evidence of lost technological ground comes from such sources as the Critical Technology Tracker. CTT finds a “stunning shift in research leadership” over the past 20 years. We’re talking about such technologies as semiconductors, biotech, artificial intelligence and robotics. The United States has slipped from the global leader position in 60 of 64 critical and emerging technologies to trailing China, which leads in 57 of 64. America now leads only in seven categories.

PERA Could Reverse Course

If we are to reverse the self-inflicted course that’s unilaterally narrowing U.S. patent eligibility and advantaging adversarial competitors, Congress must act. The bipartisan Patent Eligibility Restoration Act (S. 1546, H.R. 3152) is the most viable, remedial legislative solution.

PERA would eliminate all judicially created patent eligibility exceptions and deny courts authority to legislate through exceptions to eligibility. The bill would restore 101’s breadth, with a few very narrow, clear exceptions. Importantly, examiners, courts, the Patent Trial and Appeal Board, or others could not consider substantive patentability requirements or a specific patent claim apart from the invention as a whole in determining patent eligibility.

PERA would clear up the patent-ineligibility of mathematical formulae, laws of nature and naturally occurring matter while computer-implemented inventions would be differentiated from simply reproducing general mental processes on a computer. In short, PERA would provide bright lines that perhaps courts, stripped of the ability to create extrastatutory exceptions, can follow.

The Council for Innovation Promotion sums up PERA and its benefits well: “By replacing subjective judicial tests with clear statutory guidance, PERA would revitalize investment, encourage research in critical fields, and restore Section 101 to its intended role of promoting innovation and economic growth in the 21st century.”

We need clarity, certainty and predictability of patent-eligible subject matter if the United States is to retake the global innovation lead.

Image Source: Deposit Photos
Image ID: 10563036&nbs
Image Author: Feverpitch