Editor
Report from the NYIPLA Section 101 Forum 2017
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On March 6, 2017, BPLA president Monica Grewal attended a President’s Forum hosted by the New York Intellectual Property Law Association (NYIPLA) in New York City and moderated by former USPTO director David Kappos (now of Cravath, Swaine & Moore LLP) and immediate past NYIPLA President Dorothy Auth (Cadwalader, Wickersham & Taft LLP). The President’s Forum was a closed-door event gathering thought leaders in intellectual property to discuss the status of the law of patentable subject matter, with a goal of building consensus in the intellectual property community for a legislative “fix” to clarify the scope of patent eligibility under 35 U.S.C. § 101.

Other attendees included the Honorable Katherine Forrest (J., SDNY), the Honorable John C. Lifland (J. Ret., D. NJ), U.S. Representative Hakeem Jeffries (NY-08), as well as Scott F. Partridge (Baker Botts LLP and Chair-Elect, American Bar Association Intellectual Property Law Section), James Crowne (Deputy Executive Director for Legal Affairs, American Intellectual Property Law Association), Hans Sauer (Deputy General Counsel for Intellectual Property, Biotechnology Industry Organization), and Kevin H. Rhodes (President, Intellectual Property Owners Association). Notably, this event included representatives from the three major national IP organizations, with the BPLA being one of only two regional bar associations invited to attend. BPLA’s involvement was likely solicited based on its active history in providing substantive comments to the USPTO in response to published guidelines on examination related to patentable subject matter. See, e.g., March 16, 2015 BPLA Letter to USPTO Office of Patent Legal Administration Providing Comments on 2014 Interim Guidance on Patent Subject Matter Eligibility, available here (last visited April 24, 2017); July 28, 2014 BPLA Letter to USPTO Office of Patent Legal Administration Providing Comments on Examination Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of nature, Natural Phenomena & Natural Products, available here (last visited April 24, 2017). In addition, the BPLA membership has added to the scholarly debate on section 101 through commentary and newsletter publications. See, e.g., Lampert, J. Alice: Making Step Two Work, BPLA Spring 2016 Newsletter (Vol. 47, Issue 2), April 2016, available here.
The event, titled “Section 101 is Broken. Is There a Legislative Fix?” came amidst pervasive questioning of the tests and guidance for the determination of what qualifies as patentable subject matter that have recently been laid out by the Supreme Court, the Federal Circuit, and the USPTO. The ensuing discussion was wide-ranging, with the participants not only noting the deficiencies of the two-step analysis laid out by the Supreme Court in the 2014 Alice Corp. v. CLS Bank Int’l decision, but also proposing creative ideas for addressing the determination of patentable subject matter and offering practical assessments of the current legislative environment and the concomitant reduced likelihood of a Congressional remedy at this time. Proposals discussed ranged from minimalistic approaches such as simply tweaking the second step of the test set forth in Alice to remove reference to “inventive concept,” to a total repeal of section 101. In addition, noted was an exemplar procedural change previously implemented in the past by a senior examiner at the USPTO that held in abeyance determinations of eligibility under section 101 until after confirmation of compliance with the remaining provisions of the patent code.

A common theme was the suggestion that Alice had strayed too far from existing jurisprudence by importing the requirements of obviousness into section 101 by requiring an assessment of the “inventive concept” of the claims. There was also general consensus that additional judicial tests would not be productive.
Notably, the event was shortly preceded and followed by the release of proposed amendments for section 101 from two of the national bar associations present at the meeting. See February 7, 2017 IPO Proposed Amendments to Patent Eligible Subject Matter Under 35 U.S.C. § 101, available here (last visited April 24, 2017); March 28, 2017 Letter from the American Bar Association Section of Intellectual Property Law to Michelle K. Lee re: Supplemental Comments Related to Patent Subject Matter Eligibility, available here (last visited April 24, 2017). In preparation for the meeting, Ms. Grewal, with the assistance and support of the co-chairs of BPLA’s Patent Office Practice Committee (Sean Coughlin of Lathrop & Gage, Nicole Palmer of Lando & Anastasi and Jonathan B. Roses of WilmerHale), undertook a historic review of select Supreme Court cases related to patentable subject matter to determine if guidance might be present in those decisions that might suggest a path forward. The history of these cases, briefly summarized below, provides a useful illustration of the cases that led the Court to its Alice decision and the ensuing and ongoing debate.

In the 1853 case of O’Reilly v. Morse, the Supreme Court was tasked with a review of patent claims relating to Samuel Morse’s invention of the telegraph. 56 U.S. 62 (1853). There, the Supreme Court found Morse’s broadly worded claim 8 to be directed to unpatentable subject matter, based on concerns that the issuance of that claim would preempt the use of electric or galvanic current to mark characters at a distance in ways both known and unknown at the time. However, thirty-five years later, the Court reached the opposite conclusion regarding Alexander Graham Bell’s claim to a method and apparatus for transmitting vocal or other sounds telegraphically. Dolbear v. Am. Bell Tel. Co. (The Telephone Cases), 126 U.S. 1 (1888). The Court found that Bell’s claim was not directed to electricity in its natural state, but instead to “putting a continuous current in a closed circuit into a certain specified condition suited to the transmission of vocal and other sounds, and using it in that condition for that purpose.” The majority contrasted Morse by explaining that the earlier claim explicitly claimed “the use of the motive power of the electric or galvanic current… however developed.” The divergent results in this pair of decisions can be justified based on an assessment of the risk of preemption posed by each claim – Morse’s claim represented overreaching that would preempt the use of electric or galvanic current, while Bell’s was more narrowly directed to the use of current under specified conditions, and did not pose a similar risk.
The Court later clarified this conclusion when it revisited these cases in dicta in the 1972 case of Gottschalk v. Benson. 409 U.S. 63 (1972). There, the Court explained that the difference between the Telegraph and Telephone Cases was that Morse purported to claim all telegraphic uses of electric or galvanic current, while Bell’s claim was limited to the methods and apparatus disclosed in his application for using electricity to transmit sounds. Id. at 69. The challenged claims at issue in Benson were directed to a method of converting binary-coded decimal numbers into pure binary numerals by an algorithm that used minimal computer resources. In an opinion leary of the logistical challenges in USPTO examination of claims directed to software, the court found those claims unpatentable, stating that the failure of the Benson claims to transform or reduce an article “to a different state or thing,” was suggestive of the finding of unpatentability. Notably, the Court explicitly stated that action by Congress was needed to resolve the issue of the patentability of software.
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Volume 48, Issue 2
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Message from the President Monica Grewal
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Report of the Giles Rich Moot Court Competition
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BPLA Committee Report
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Undiscovered “discovery”: Measures available in European civil law systems to obtain evidence in possession of the counterpart
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Report from the NYIPLA Section 101 Forum 2017
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Limitations on Enforceability of Patent Rights
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Members on the Move
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