Congress Should Move PERA As SCOTUS Let Us Down Again

Congress Should Move PERA As SCOTUS Let Us Down Again

A poor example has been set for the lower courts by the High Court which has overlooked basic statutory language and legislated from the bench.

The US Supreme Court for the umpteenth time has refused to take a patent eligibility case on appeal. Certiorari was denied to Audio Evolution Diagnostics versus United States et al on June 6 by SCOTUS. All of AED’s patent claims were invalidated by the US Court of Federal Claims, “conflating novelty and obviousness under 35 U.S.C. §§ 102 and 103 with patent eligibility under § 101,” as per the SCOTUS petition of Audio Evolution. The US Court of Appeals for the Federal Circuit then dialled it once again, invoking Federal Circuit Rule 36 and disposing of the appeal with summary affirmance—one word—relinquishing one more chance to provide parties, inventors and others guidance on where the line lies between eligibility and ineligibility.

A poor example has been set for the lower courts by the High Court which has overlooked basic statutory language and legislated from the bench. SCOTUS in Alice Corp. versus CLS Bank, considered an invention implemented by a computer to be an abstract idea. The court brought the patentability criteria of novelty and non-obviousness into the threshold patent eligibility determination, mixing oil and water in Mayo Collaborative Services versus Prometheus Laboratories. It is a very costly decision for our country though the justices seem content to leave intact their convoluted, confusing 101 jurisprudence that has led to such uncertainty, unpredictability and lack of clarity. SCOTUS’s Alice-Mayo framework for determining whether certain subject matter falls into one of Section 101’s broad eligibility categories or does not leave courts disposed to deny eligibility to bona fide inventions is the problem. Extensive damage has been done to patents related to medical diagnostics and computer-implemented inventions by US courts. Judicially created exceptions that block US patent eligibility continue to mount. As former US Patent and Trademark Office (USPTO) Director Andrei Lancu, testifying at the same Senate hearing, reportedly said: “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 US economy.” Congress must act if we are to reverse the self-inflicted course that is unilaterally narrowing US patent eligibility and benefitting adversarial competitors. The most viable, remedial legislative solution is the bipartisan Patet Eligibility Restoration Act (PERA). All judicially created patent eligibility exceptions would be eliminated by PERA which would deny courts authority to legislate through exceptions to eligibility. The breadth of 101 would be restored by the bill, with a few very narrow, clear exceptions. The Council for Innovation Promotion has reportedly summed up PERA and its benefits saying: “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.”