101

Subscribe to 101

Lack of Stakeholder Consensus on 101 Effort

The sponsors of the promised bill to reform 35 U.S.C. § 101 are struggling to regain earlier momentum. It seems that the inclusion of the 112(f) provision (designed to bring Big Tech to the table on an otherwise unwelcome reform effort) has not been effective. Worse, the 112 provision has actually turned off some in Bio/Pharma. As such, the 101 bill promised back in July now appears to be slipping to October.

Given the recent complications, the Stronger Patents Act has been dusted off to remind Big Tech that, at least in theory, there could be much worse legislative consequences than a more patent friendly 101 statute. 
Continue Reading Political Theater & The Stronger Patents Act

Takings Challenge to IPR Fails

Since the Supreme Court’s decision in Cuozzo Speed, there has been speculation that there may be an opportunity to attack AIA trials on different constitutional grounds. Most recently, it was argued that cancellation of an improvidently granted patent constituted a 5th Amendment “taking.”

In Celgene Corporation v. Peter, perhaps not surprisingly, the Federal Circuit held that “IPRs do not differ significantly enough from preexisting PTO mechanisms for reevaluating the validity of issued patents to constitute a Fifth Amendment taking.”

While IPRs do not differ significantly from reexamination in scope, CBM proceedings do. 
Continue Reading Will a Takings Challenge to CBM Proceedings Succeed?

Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and…

PatentsPostGrant.com June Webinar

June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation.

Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101…

Plan Ahead for 101 Change

With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon.

Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime?
Continue Reading Preparing for 101 Change: Preserving Future Arguments

Senate Judiciary Hearings Start Next Week

The Senate Judiciary Committee will conduct back-to-back hearings next Tuesday and Wednesday entitled “The State of Patent Eligibility in America. The marathon fact-finding hearings come on the heels of the proposed 101 framework released last week. Each of the hearings will include three panels of five speakers.

Judging on the lineups for next week, so far the deck is plainly stacked pro-reform.
Continue Reading Senate 101 Hearings Stacked in Favor of Reform

Proposed Framework Isn’t Just About Fixing 101

Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.

The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech.
Continue Reading 101 Legislative Proposal Includes Provision to Narrow Functional Claims

Draft Framework Released

As previously discussed, Congress is poised to revise the law of patent eligibility under 35 U.S.C. § 101.  To this end, a draft framework has been floated in advance of three upcoming stakeholder meetings on the Hill (June 4th, 5th and 11th).

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representatvie Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee, Hank Johnson (D-GA-4), Chairman of the House Judiciary Subommittee on Intellectual Property and the Courts, and Steve Stivers (R-OH-15) released a bipartisan, bicameral draft bill that would reform Section 101 of the Patent Act.
Continue Reading Congress Floats Draft Bill Outlining New 101 Framework