https://www.ipwatchdog.com/2019/06/30/patent-...id=110847/
June 30, 2019
Senator Thom Tillis
Chair, Senate IP Subcommittee
113 Dirksen Senate Office Building
Washington, DC 20510
Senator Chris Coons
Ranking Member, Senate IP Subcommittee
218 Russel Senate Office Building
Washington, DC 20510
Representative Doug Collins
Ranking Member, House Judiciary Committee
1504 Longworth House Office Building
Washington, DC 20515
Representative Hank Johnson
Chair, House IP Subcommittee
2240 Rayburn House Office Building
Washington, DC 20510
Representative Steve Stivers
2234 Rayburn House Office Building
Washington, DC 20515
RE: Patent Eligibility
Dear Senator Tillis, Senator Coons, Representative Collins, Representative Johnson and Representative Stivers:
We applaud your efforts over the last several months to engage stakeholders on the important issue of patent eligibility reform. We view this effort as critical for the future of a variety of high-tech and life sciences industries in the United States.
As was discussed during testimony in recent hearings of the Senate IP Subcommittee, the Supreme Court has refused four (4) dozen petitions for certiorari on the issue of patent eligibility since issuing its decision in in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The assumption must, therefore, be that the Supreme Court is content with its patent eligibility jurisprudence.
Unfortunately, Supreme Court jurisprudence on patent eligibility is irreconcilable and has created tremendous uncertainty in an area where long term certainty is absolutely essential. Innovation typically takes a great deal of time, and commercializing that innovation takes even more time. Without long term stability and predictability investment decisions and incentives become skewed.
The United States Court of Appeals for the Federal Circuit has explained in at least several decisions that they feel handcuffed by Supreme Court jurisprudence. But even more problematic is the wide divergence of outcomes among Federal Circuit panels. Put simply, the Supreme Court test for patent eligibility is subjective and unpredictable. Congress must act.
Amidst this uncertainty, and with the fifth anniversary of the Supreme Court’s Alice decision having just passed, last week IPWatchdog.com held a two-day symposium to discuss the state of patent eligibility in the United States. During this symposium overwhelming consensus was achieved by the Patent Masters™ faculty and symposium attendees on a variety of principles and recommendations.
The following statements received unanimous consent during the Patent Masters™ Symposium:
Supreme Court decisions interpreting 35 U.S.C. 101 have harmed the U.S. economy.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of the useful arts.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to medical diagnostics.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to important areas of software innovations, such as artificial intelligence and machine learning.
Supreme Court decisions interpreting 35 U.S.C. 101 have diminished America’s global competitiveness.
The Supreme Court was unquestionably incorrect in AMP v. Myriad Genetics when they said discoveries are not patent eligible. The Constitution explicitly says otherwise, as does 35 U.S.C. 101.
The following statements achieved consent from at least eighty-percent (80%) of those attending the symposium:
The Supreme Court’s decisions on patent eligibility in Funk Brothers, Benson, Flook, Diehr, Chakrabarty, Bilski, Mayo, Myriad and Alice are hopelessly irreconcilable. [91% consensus]
Supreme Court decisions interpreting 35 U.S.C. 101 are driving innovation and investment overseas. [86% consensus]
Supreme Court decisions interpreting 35 U.S.C. 101 violate separation of powers by adding “judicial exceptions” and usurping Congressional authority to define what is patent eligible. [83% consensus]
The 2019 Revised Patent Subject Matter Eligibility Guidance published by the USPTO creates the proper analytical framework for approaching questions of patent eligibility. [82% consensus]
Therefore, it is the recommendation of the undersigned attendees of the Patent Masters™ Symposium that:
Congress should legislatively overrule Alice v. CLS Bank.
Congress should legislatively overrule Mayo v. Prometheus.
Congress should explicitly prohibit “judicial exceptions” to patent eligibility.
In conclusion, we greatly appreciate your work on this important matter, and we enthusiastically support your efforts. We stand ready to help in any way possible. Strengthening the U.S. patent system for future generations is of paramount importance.
Very truly yours,
Eugene R. Quinn, Jr., President & CEO, IPWatchdog, Inc.
Paul Michel, Retired Chief Judge, U.S. Court of Appeals for the Federal Circuit
cc: Andrei Iancu, Director of the USPTO
Meredith Addy, Partner, AddyHart, P.C.
James Carmichael, Carmichael IP
Brad Close, Executive Vice President, Transpacific IP
Nicholas D’Andrea, Patent Agent
Kate Gaudry, PhD, Patent Attorney (on behalf of herself)
Robert Greenspoon, Founding Partner, Flachsbart & Greenspoon, LLC
Chris Israel, Executive Director, Alliance for U.S. Startups and Inventors for Jobs
Efrat Kasznik, President, Foresight Valuation Group, LLC
Sherry Knowles, Principal, Knowles Intellectual Property Strategies, LLC
Jack Lu, Founding Partner and Chief Economist, IPMAP LLC
Lissi Mojica, Managing Director, Answers IP, LLC
Mark Nowatarski, Principal, Markets, Patents & Alliances, LLC
Isaac T. Slutsky, Shareholder, Brooks Kushman
Bernard Tomsa, Shareholder, Brooks Kushman
John White, Partner, Berenato & White, LLC
June 30, 2019
Senator Thom Tillis
Chair, Senate IP Subcommittee
113 Dirksen Senate Office Building
Washington, DC 20510
Senator Chris Coons
Ranking Member, Senate IP Subcommittee
218 Russel Senate Office Building
Washington, DC 20510
Representative Doug Collins
Ranking Member, House Judiciary Committee
1504 Longworth House Office Building
Washington, DC 20515
Representative Hank Johnson
Chair, House IP Subcommittee
2240 Rayburn House Office Building
Washington, DC 20510
Representative Steve Stivers
2234 Rayburn House Office Building
Washington, DC 20515
RE: Patent Eligibility
Dear Senator Tillis, Senator Coons, Representative Collins, Representative Johnson and Representative Stivers:
We applaud your efforts over the last several months to engage stakeholders on the important issue of patent eligibility reform. We view this effort as critical for the future of a variety of high-tech and life sciences industries in the United States.
As was discussed during testimony in recent hearings of the Senate IP Subcommittee, the Supreme Court has refused four (4) dozen petitions for certiorari on the issue of patent eligibility since issuing its decision in in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The assumption must, therefore, be that the Supreme Court is content with its patent eligibility jurisprudence.
Unfortunately, Supreme Court jurisprudence on patent eligibility is irreconcilable and has created tremendous uncertainty in an area where long term certainty is absolutely essential. Innovation typically takes a great deal of time, and commercializing that innovation takes even more time. Without long term stability and predictability investment decisions and incentives become skewed.
The United States Court of Appeals for the Federal Circuit has explained in at least several decisions that they feel handcuffed by Supreme Court jurisprudence. But even more problematic is the wide divergence of outcomes among Federal Circuit panels. Put simply, the Supreme Court test for patent eligibility is subjective and unpredictable. Congress must act.
Amidst this uncertainty, and with the fifth anniversary of the Supreme Court’s Alice decision having just passed, last week IPWatchdog.com held a two-day symposium to discuss the state of patent eligibility in the United States. During this symposium overwhelming consensus was achieved by the Patent Masters™ faculty and symposium attendees on a variety of principles and recommendations.
The following statements received unanimous consent during the Patent Masters™ Symposium:
Supreme Court decisions interpreting 35 U.S.C. 101 have harmed the U.S. economy.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of the useful arts.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to medical diagnostics.
Supreme Court decisions interpreting 35 U.S.C. 101 are impeding the progress of innovations relating to important areas of software innovations, such as artificial intelligence and machine learning.
Supreme Court decisions interpreting 35 U.S.C. 101 have diminished America’s global competitiveness.
The Supreme Court was unquestionably incorrect in AMP v. Myriad Genetics when they said discoveries are not patent eligible. The Constitution explicitly says otherwise, as does 35 U.S.C. 101.
The following statements achieved consent from at least eighty-percent (80%) of those attending the symposium:
The Supreme Court’s decisions on patent eligibility in Funk Brothers, Benson, Flook, Diehr, Chakrabarty, Bilski, Mayo, Myriad and Alice are hopelessly irreconcilable. [91% consensus]
Supreme Court decisions interpreting 35 U.S.C. 101 are driving innovation and investment overseas. [86% consensus]
Supreme Court decisions interpreting 35 U.S.C. 101 violate separation of powers by adding “judicial exceptions” and usurping Congressional authority to define what is patent eligible. [83% consensus]
The 2019 Revised Patent Subject Matter Eligibility Guidance published by the USPTO creates the proper analytical framework for approaching questions of patent eligibility. [82% consensus]
Therefore, it is the recommendation of the undersigned attendees of the Patent Masters™ Symposium that:
Congress should legislatively overrule Alice v. CLS Bank.
Congress should legislatively overrule Mayo v. Prometheus.
Congress should explicitly prohibit “judicial exceptions” to patent eligibility.
In conclusion, we greatly appreciate your work on this important matter, and we enthusiastically support your efforts. We stand ready to help in any way possible. Strengthening the U.S. patent system for future generations is of paramount importance.
Very truly yours,
Eugene R. Quinn, Jr., President & CEO, IPWatchdog, Inc.
Paul Michel, Retired Chief Judge, U.S. Court of Appeals for the Federal Circuit
cc: Andrei Iancu, Director of the USPTO
Meredith Addy, Partner, AddyHart, P.C.
James Carmichael, Carmichael IP
Brad Close, Executive Vice President, Transpacific IP
Nicholas D’Andrea, Patent Agent
Kate Gaudry, PhD, Patent Attorney (on behalf of herself)
Robert Greenspoon, Founding Partner, Flachsbart & Greenspoon, LLC
Chris Israel, Executive Director, Alliance for U.S. Startups and Inventors for Jobs
Efrat Kasznik, President, Foresight Valuation Group, LLC
Sherry Knowles, Principal, Knowles Intellectual Property Strategies, LLC
Jack Lu, Founding Partner and Chief Economist, IPMAP LLC
Lissi Mojica, Managing Director, Answers IP, LLC
Mark Nowatarski, Principal, Markets, Patents & Alliances, LLC
Isaac T. Slutsky, Shareholder, Brooks Kushman
Bernard Tomsa, Shareholder, Brooks Kushman
John White, Partner, Berenato & White, LLC
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