The Report does not appear to be the US Commissioner’s recommendations, but rather the results of consultations with the public.
As the Report notes, it is widely accepted in the USA that the Supreme Court’s decisions between 2010 to 2014 in Bilski, Mayo, Myriad and Alice have substantially altered what is patentable subject matter under US law and what not. The most dramatic effects being experienced by the life sciences and computer-related technologies.
While some submissions considered that it would sufficient to let the common law process of evolution unfold or the Commissioner could take administrative action to alleviate the effects of the Supreme Court’s decisions, “a majority, however, recommended legislative change”:
According to these participants, the Court’s precedent is having such a harmful impact on innovation and business development that a legislative solution is critical. ….
There appears to have been rather less uniformity about what the legislative solution should be.
- Some submissions called for a legislative requirement only that the claim be for a technological or useful art, without a requirement for “newness”.
- Some submitted that the requirement should be something having a practical application.
- Some submissions argued that express legislated exceptions should replace the Supreme Court’s common law exceptions. AIPLA for example contended for an exception:
A claimed invention is ineligible … only if the claimed invention as a
whole exists in nature independent and prior to any human activity, or
can be performed solely in the human mind.
- Some submissions called for the legislation to make it clear that patent eligibility is a separate requirement to the other requirements such as novelty and obviousness, and to be considered separately from those requirements.
- Several commentators thought that the problem of “pre-emption” could be addressed by introducing a specific exemption from infringement for research.
Our High Court in its own Myriad decision managed to adopt an even more alarming approach to patentable subject matter notwithstanding that Parliament had introduced an explicit research defence in s 119C. While it would appear likely to be some time before a clear solution emerges in the USA, maybe these developments should also give us pause for thought, given how enthusiastically the Patent Office and, under its guidance, the Full Court has jumped on the Alice type bandwagon, albeit drawing on the even more curious European approach.
Lid dip: Patently-O