Reforming Patent Eligibility: Supplementary Statement of Professors Jeffrey A. Lefstin and Peter S. Menell

20 Pages Posted: 17 Jun 2019 Last revised: 3 Oct 2019

See all articles by Peter S. Menell

Peter S. Menell

University of California, Berkeley - School of Law

Jeffrey A. Lefstin

University of California Hastings College of the Law

Date Written: June 4, 2019

Abstract

Seven years ago, the Supreme Court triggered a drastic and far-reaching experiment in patent eligibility standards. During the preceding decades, district courts invalidated a small handful of patents per year on eligibility grounds. Since the Court’s Mayo decision, that number has skyrocketed past 100 patents per year. The Mayo-Alice framework has also wreaked attendant havoc at the Federal Circuit, the Patent Office, and among the broad range of businesses and research institutions assessing investments in research and development. District courts now routinely integrate specific patent validity considerations set forth in sections 102, 103, and 112 into section 101 patent eligibility determinations without the care and precision that the patent validity provisions demand. They also routinely invalidate patents at early stages of litigation without creating a record. The Federal Circuit is struggling to make sense of the fallout of the Supreme Court’s radical reinterpretation of patent eligibility.

This supplementary statement aims to assist the Senate Judiciary Subcommittee on Intellectual Property in placing the Coons-Tillis legislative proposal into the broader historical context and to identify some larger ramifications and potential concerns about adapting patent law for the information age. As we explain, the Supreme Court has undermined Congress’s eligibility/patentability framework. The proposed legislation would restore coherence to patent validity analysis and promote technological innovation and scientific discoveries vital to the betterment of society.

Keywords: Patent, Patent Eligibility, 101, Patentable Subject Matter, Bioscience, Software, Business Methods, scientific discovery, Mayo, Prometheus, Sequenom, Alice, Neilson v. Harford, Flook, Diehr, statutory interpretation

Suggested Citation

Menell, Peter S. and Lefstin, Jeffrey A., Reforming Patent Eligibility: Supplementary Statement of Professors Jeffrey A. Lefstin and Peter S. Menell (June 4, 2019). UC Hastings Research Paper No. 336. Available at SSRN: https://ssrn.com/abstract=3399499 or http://dx.doi.org/10.2139/ssrn.3399499

Peter S. Menell (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

Jeffrey A. Lefstin

University of California Hastings College of the Law ( email )

200 McAllister Street
San Francisco, CA 94102
United States

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