Error 101: IP Associations Propose Legislation for Patentable Subject Matter

Three prominent IP groups propose amending § 101 to clarify what is patentable subject matter. The American Bar Association (ABA) IP Section, and the Intellectual Property Owners Association (IPO) in a joint proposal with the American Intellectual Property Law Association (AIPLA), cited the need resolve ambiguity in § 101 jurisprudence caused by recent Supreme Court decisions.

Both proposals keep the current four categories of patentable subject matter: process, machine, manufacture, and composition of matter, or any useful improvement thereof. Also, both proposals add language that explicitly exclude § 102, 103, or 112 considerations from the eligibility inquiry.

Where the proposals differ is how they define exceptions to eligibility. For the ABA IP Section, recent Supreme Court decisions shows that their primary concern with eligibility is the ability to claim the building blocks of innovation, which include laws of nature, natural phenomena, and abstract ideas. Therefore, an invention is ineligible if the claims would “preempt the use of others of all practical applications of a law of nature, natural phenomenon, or abstract idea.” The IPO/AIPLA proposal, however, has two exceptions. First, an invention is ineligible if, as a whole, it “exists in nature independently of and prior to any human activity.” Second if an invention is performed solely in the human mind, it is also ineligible. 

While the legislative proposals are largely similar, these differences in exceptions to eligibility may prove significant if Congress decides to revise the current § 101 language.