Testimony of Joshua D. Sarnoff Senate Committee on the Judiciary, Subcommittee on Intellectual Property Hearing: The State of Patent Eligibility in America: Part I

23 Pages Posted: 6 May 2020

Date Written: June 4, 2019


“This written testimony of Joshua D. Sarnoff, Professor of Law, DePaul University was submitted to the Intellectual Property Subcommittee of the Senate Judiciary Committee for its hearing on June 4, 2019, and addresses the Legislative Draft of May 22, 2019 to revise patent eligible subject matter. The testimony makes nine basic points:

(1) the current uncertainty in eligibility doctrine does not justify the pending legislative efforts to eliminate existing protection for the public domain of scientific, natural, and fundamental discoveries ("science, nature, and ideas");

(2) the pending legislative revision proposals do not address the root causes of the doctrinal uncertainty;

(3) the pending proposals, by restricting the public domain and displacing line-drawing creativity judgments, would not harmonize U.S. patent law with that of other countries;

(4) the current, judicially interpreted requirement of Section 101 to treat ineligible novel discoveries of science, nature, and ideas as prior art against applicants claiming practical applications thereof is good innovation and moral policy;

(5) by minimizing reliance on eligibility doctrine to determine patent validity, the pending proposals would increase uncertainty in and costs of the patent system;

(6) the pending proposals would expand the utility patent system to aesthetic and other forms of non-technological creativity, by removing consideration of the kind of novel creativity from eligibility determinations;

(7) expanding the patent system to eliminate the exclusions for science, nature, and ideas and to authorize as eligible claims to most or all practical, technological applications of nontechnological creativity likely will be held unconstitutional, generating further legal uncertainty;

(8) trying to avoid those results by more clearly defining "specific," "practical" and "technological" utility will prove at least as difficult as addressing directly the requisite kind of eligible creativity through Section 101's eligible novelty doctrine; and

(9) if Congress proceeds to revise eligibility doctrine, it should adopt specific measures to minimize uncertainty, litigation, and the need for further legislative revisions.”

Keywords: Discovery, Invention, Patentable Subject Matter, Patent Eligibility, Novelty, Utility, Useful Arts, Technological, Field of technology, Technical Effect, Scientific Principles, Natural Phenomena, Abstract Ideas, Aesthetic Discoveries, Public Domain, Unconstitutional, TRIPS Agreement, First Amendment

JEL Classification: D61, D63, D64, H41, K11, K21, K33, O30, O31, O32, O33, O34, O38, O39

Suggested Citation

Sarnoff, Joshua D., Testimony of Joshua D. Sarnoff Senate Committee on the Judiciary, Subcommittee on Intellectual Property Hearing: The State of Patent Eligibility in America: Part I (June 4, 2019). Available at SSRN: https://ssrn.com/abstract=3572387 or http://dx.doi.org/10.2139/ssrn.3572387

Joshua D. Sarnoff (Contact Author)

DePaul University College of Law ( email )

25 E. Jackson Blvd.
Chicago, IL Cook County 60604-2287
United States
312-362-6326 (Phone)

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