March Highlights: Promoting Patent Eligibility Reform
The Patent Eligibility Restoration Act (PERA), reintroduced by Senators Thom Tillis and Chris Coons in June, remains under consideration by the 118th Congress. This important bill would resolve the confusion created by a series of recent Supreme Court decisions on patent eligibility, clarifying the categories of inventions that are eligible for patent protection. In doing so, it would restore incentives for research and investment in cutting-edge technology areas, bolstering America’s innovation economy.
C4IP is actively engaged in and supportive of initiatives advocating for the swift passage of this important legislative reform:
- C4IP published a blog outlining the critical reasons for supporting PERA’s passage.
- C4IP Board Members Judge Paul Michel (ret.) and Judge Kathleen O’Malley (ret.) published an opinion essay in The Hill endorsing PERA as a solution to America’s declining economic leadership.
“If there is any doubt about whether those inventions can be protected, entrepreneurs and investors will inevitably err on the side of caution — and direct their resources to other sectors…[PERA] would give investors the certainty and objectivity needed to continue funding cutting-edge research with the potential to change, or even save, lives.”
- Coming up: On April 9, C4IP, the Coalition for 21st Century Patent Reform (21C), and Innovation Alliance will co-host a “Lunch and Learn” to educate attendees about PERA, its importance for the U.S. patent system, and its role in restoring investment and innovation in the United States. C4IP Board Member Judge Kathleen O’Malley (ret.) will be a featured speaker. The event will be held from 11:45 a.m. to 1:00 p.m. EDT in the U.S. Senate (Room TBD).
- For more details and to register for the event, email plpbd@akingump.com with the subject “RSVP: PERA Lunch” and include your full name, member office/company name, and any dietary restrictions you may have.
- Coming up: On April 9, C4IP, the Coalition for 21st Century Patent Reform (21C), and Innovation Alliance will co-host a “Lunch and Learn” to educate attendees about PERA, its importance for the U.S. patent system, and its role in restoring investment and innovation in the United States. C4IP Board Member Judge Kathleen O’Malley (ret.) will be a featured speaker. The event will be held from 11:45 a.m. to 1:00 p.m. EDT in the U.S. Senate (Room TBD).
- You can find additional resources on PERA here and below:
- Myths vs. Facts: PERA – Diagnostics and Life Sciences
- Myths vs. Facts: PERA – Software and Technology
- C4IP Blog: Why C4IP Supports the Patent Eligibility Restoration Act (PERA)
- C4IP Letter to Senate Judiciary IP Subcommittee on PERA
- C4IP Letter to Sen. Thom Tillis in Support of PERA
- Reaffirm and Refine: A Government Agenda for Intellectual Property
March Highlights: C4IP Releases Inaugural Congressional Innovation Scorecard
C4IP released its inaugural Congressional Innovation Scorecard, which assesses each member of Congress’s record on pivotal issues related to innovation — including support for PERA and PREVAIL — and assigns a grade based on the extent to which they are working to advance strong and effective IP rights that promote American innovation, creative output, and industry.
“A supermajority of Congress received Innovation Scorecard grades of “C” or “C-,” indicating only a passing interest in national IP policy…In the Senate, Senators Chris Coons, Thom Tillis, and Mazie Hirono distinguished themselves as champions for U.S. IP rights, receiving Innovation Scorecard grades of “A+,” “A+,” and “A,” respectively. In the House, nobody received an A, with Representative Ben Cline receiving the highest grade of “B+.”
- C4IP unveiled the Scorecard during a March 21 briefing at the National Press Club, which was attended by Congressional staffers and members of the media. You can find a full recording and photos here.
- Senator Chris Coons, Senator Thom Tillis, and Representative Ben Cline each released statements acknowledging their Scorecard ratings and the continued importance of IP.
- Bloomberg Law, Law360, IPWatchdog, Deseret News, and the Montgomery Advertiser all published articles covering the Scorecard and its findings.
- C4IP Co-Chairs Andrei Iancu and David Kappos expanded on the Scorecard’s purpose and how — for the sake of countless American companies and workers — Congress must step up and champion robust IP rights in an opinion essay published in The Hill.
- C4IP remains committed to working closely with members of Congress to ensure they support strong, predictable, and reliable IP rights, in line with our founders’ vision and in order to secure our nation’s future prosperity with good jobs and a high quality of life. We hope constituents will utilize our Scorecard as a trusted resource and encourage their representatives to prioritize these critical issues.
Additional Coalition Updates
- On April 9, CSIS will host the 2024 LeadershIP Conference, the premier conference on IP, innovation, and national security policy. Featured speakers include David Norquist, CEO of NDIA and former Undersecretary of Defense, Walt Copan, senior adviser of CSIS’s Renewing American Innovation Project and former NIST Director, and C4IP Board Member Judge Paul Michel, former Chief Judge of the U.S. Court of Appeals for the Federal Circuit.
- Learn more about the event and register here.
- On April 1, C4IP Co-Chair Andrei Iancu and President & CEO of UCLA Technology Development Corporation Amir Naiberg published an opinion essay in The Orange County Register explaining how the Biden administration’s march-in proposal threatens innovative research at universities across the country.
- The piece was also published in LA Daily News, Press-Enterprise, The Sun, San Gabriel Valley Tribune, and Press-Telegram.
- Throughout March, C4IP Co-Chairs Andrei Iancu and David Kappos appeared on talk radio shows across the nation to discuss how the Biden administration’s proposed march-in framework would harm America’s economy.
- Andrei Iancu made appearances on The Dana Show with Dana Loesch, Tony Katz Today, and The Lars Larson Show.
- David Kappos spoke with Frank Mottek of Mottek On Money and appeared on The Lunch Hour with Federal Newswire.
- On March 14, C4IP Co-Chair Andrei Iancu was interviewed in a PharmaVoice article about how the Biden administration’s recent proposal for march-in rights would stifle drug research and innovation.
“Here’s the reality: If the government threatens to take away these patents, the consumers will have zero access to that technology if the industry doesn’t bring it to market. The price of no technology on the market is infinite, and there is no amount of money you can give to buy a product that doesn’t exist.”
- On March 4, C4IP Co-Chair David Kappos was quoted in a Law360 article on the World Trade Organization’s lack of agreement on a waiver for IP rights, which he described as “affirmatively good news” for global innovation because it will ensure that strong IP rights incentivize preparation for the next global emergency.
- On March 1, C4IP Co-Chair Andrei Iancu published an opinion essay in Fox News criticizing the Biden administration’s shortsighted and dangerous draft framework for march-in rights.
“Make no mistake: Weakening or eliminating patent rights to advance political agendas will chill private sector risk-taking, technological progress and access to cutting-edge inventions.”
Government Rundown
USPTO Program: Public Symposium on AI and IP:
On March 27, the USPTO hosted a public symposium on the intersection of IP rights and artificial intelligence, which included a virtual component as well as an in-person component at Loyola Marymount University in Los Angeles. The program discussed key questions regarding patent and copyright protections as they relate to AI-generated content and examined the USPTO’s own responsibilities pursuant to Executive Order 14110, “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.” (USPTO, 3/27)
USPTO Webinar: Igniting Innovation: Empowering Students Through STEAM:
On March 21, the USPTO hosted a virtual professional development session for educators which focused on how to incorporate IP concepts into science, technology, engineering, and math curricula. The webinar introduced online resources for IP- and invention-focused projects and featured two student inventors who recently received a patent on an invention they made for a high school class. (USPTO, 3/21)
House Energy & Commerce Committee, Subcommittee on Health Hearing: Evaluating Approaches to Diagnostic Test Regulation and the Impact of the FDA’s Proposed Rule:
On March 21, the House Subcommittee on Health held a hearing to discuss FDA regulation of medical diagnostic tests and a recently proposed rule that would govern laboratory developed tests. Susan Van Meter of the American Clinical Laboratory Association, Zach Rothstein of AdvaMedDx, and Donald S. Karcher of the College of American Pathologists were among those who testified as witnesses. (House Committee on Energy & Commerce, 3/21)
USPTO Program: Women’s Entrepreneurship – Global initiatives and Opportunities for Women:
On March 6, the USPTO hosted a program to raise awareness of international efforts to help women take advantage of IP rights, which included a virtual component as well as an in-person component at the USPTO headquarters in Alexandria, VA. The program’s guest speakers included directors and administrators from the intellectual property offices of the Philippines, Paraguay, Namibia, and Canada as well as the United States. (USPTO, 3/6)
Fact Check
Patents provide crucial incentives for inventors and businesses to invest time and funds into cutting-edge and emerging technologies. However, a series of Supreme Court decisions issued during the 2010s muddled the state of patent eligibility for many such technologies, such as medical diagnostics and artificial intelligence. The Patent Eligibility Restoration Act (PERA) would restore pre-2010 eligibility standards for these important technology areas and protect American innovation leadership.
On March 11, a group of tech and retail companies sent a letter to the chairs of the Senate Judiciary Committee advocating against PERA. However, their argument relied on — and perpetuated — numerous falsehoods about the bill.
| Claim: PERA would “[sever] patent rights from their historic mooring to improvements in technology.” |
| In reality: PERA would restore patent rights to their historic foundations, only overturning recent judicial decisions that have misinterpreted longstanding statutes and deprived inventors in certain areas of technology of crucial IP protections. It would expand the requirements for patent eligibility to be consistent with the expansive scope of the language originally set out by Congress in Section 101 of the Patent Act prior to judicial intervention. However, it would not change the established requirements for actually obtaining a patent on a particular technological advancement, which include being novel and non-obvious — in other words, being a new technology or an improvement to one. |
| Claim: PERA would “overrule” established legal standards governing what patents may claim and make certain inventions automatically patentable. |
| In reality: PERA would affect only the legal standards surrounding patent eligibility, which is the statute that governs only what types of technology should be further considered for entitlement to a patent — it would not make any invention automatically patentable. The bill also would not affect standards governing how a patent must draft its claim, as this is not a question of eligibility but is largely governed by a different section of the patent statute, which PERA would not alter. |
| Claim: PERA “would do serious harm to the American innovation economy.” |
| In reality: The restrictions on patent eligibility caused by errant Supreme Court decisions such as Mayo v. Prometheus and Alice v. CLS have already caused serious harm to our innovation economy by stymieing research into pivotal technologies like medical diagnostics, artificial intelligence, and other areas of computer-implemented inventions. In the four years after Mayo, for instance, the U.S. medical diagnostics industry lost an estimated $9.3 billion in likely investment. By restoring patent eligibility in these important sectors, PERA would incentivize innovation and create significant benefits for both U.S. businesses and the American public. |
Celebrating American Innovation
Inventor Spotlight
This month, C4IP is recognizing Margaret Knight, one of the most prolific female inventors of the 19th century. She is best known for her invention of a machine for producing paper bags.
- Knight was born in York, Maine, in 1838, and worked in textile mills from a very early age following the death of her father.
- She created her first invention at the age of 12, which was a safety device to protect workers using textile looms.
- Knight is most famous for inventing a machine to mass produce flat-bottomed paper bags, which were previously considered more of a specialty item and required the labor of 30 people.
- She patented her invention in 1871 and later secured another patent for improvements to her original design in 1879.
- She founded the Eastern Paper Bag Company in Hartford, Connecticut to commercialize the bags, which soon became ubiquitous for their simple utility.
- The royalties from Knight’s patented invention allowed her to become a full-time inventor, and over the course of her career, she registered more than 26 patents covering diverse technologies.
- The paper bag industry is still going strong: Americans use more than 10 billion of the bags each year, and the global market for them is estimated at $5.6 billion.
- Environmental considerations could soon push paper bags’ popularity higher, with nearly three-quarters of Americans favoring them over plastic bags on eco-friendliness.
(Photo courtesy of the Smithsonian National Museum of American History)
What’s Happening in Congress
As Democratic and Republican members of Congress continue to weigh legislative priorities during the 118th Congress, top of mind for those who follow intellectual property policy are:
The Patent Eligibility Restoration Act (PERA) of 2023:
In June 2023, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) reintroduced legislation aimed at restoring patent eligibility for important categories of inventions – including life sciences diagnostics, gene therapies, and computer-implemented inventions – as well as resolving questions regarding the scope of patent eligibility. In so doing, the Patent Eligibility Restoration Act will foster the development of next-generation technologies across innovative industries.
The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act:
In June 2023, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) – joined by Representatives Ken Buck (R-CO) and Deborah Ross (D-NC) on the House side – introduced legislation that will eliminate redundant patent invalidity challenges and safeguard Americans’ right to participate in a fair and accessible patent system. The PREVAIL Act contains important reforms to the Patent Trial and Appeal Board, which will return the body to its original purpose of providing an efficient alternative to district court litigation, and will curtail the practice by patent infringers of forcing inventors to defend their patents repeatedly and in multiple fora.
The Prohibiting Adversarial Patents (PAPA) Act:
In September 2023, Representatives Scott Fitzgerald (R-WI), Mike Gallagher (R-WI), Darrell Issa (R-CA), and Blaine Luetkemeyer (R-MO) introduced legislation that raises a number of concerns. With the well-intended goal of protecting U.S. national security, the PAPA Act has the potential to trigger significant unintended consequences. These include potential retaliatory moves by China and other nations to suspend or render unenforceable patents owned by American companies, further enabling theft of American IP overseas. The actions called for by the bill could also violate U.S. treaty obligations, which would in turn embolden other nations to violate IP-related treaties in various ways. In addition, confiscating patents, or rendering them unenforceable, violates basic principles of property, and therefore could weaken the concept of patents as property rights. These and other considerations are of the utmost importance as U.S. lawmakers study the full scope of the PAPA Act. C4IP stands ready to work with Members of Congress to address the threat posed by foreign entities, while maintaining the integrity of the U.S. patent system.
The Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act:
In September 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced legislation designed to protect online consumers from harmful counterfeit products. By establishing trademark infringement liability for e-commerce platforms that allow the sale of dangerous counterfeit items, requiring brand owners to notify platforms of their mark(s) in advance, and providing safety from liability to platforms that appropriately vet and remove counterfeit sellers, the SHOP SAFE Act will protect American families as well as businesses and IP holders.
The Improving Efficiency to Increase Competition Act:
In January 2024, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced legislation intended to reduce the administrative burden on universities and other institutions that receive federal research grants so that they can focus more intently on producing new innovations. Specifically, the legislation would direct the Government Accountability Office (GAO) to conduct a study on intellectual property reporting requirements under the Bayh-Dole Act, which vary between federal agencies. Such a study will offer important insights into how the government can make the reporting process more efficient and remove barriers that may have inhibited the development of new inventions.
The Interagency Patent Coordination and Improvement Act of 2023:
In January 2023, Senators Dick Durbin (D-IL), Chris Coons (D-DE), Thom Tillis (R-NC), and Chuck Grassley (R-IA) introduced the Interagency Patent Coordination and Improvement Act of 2023. The bill would create an interagency task force to share patent filing information and technical assistance between USPTO and FDA officials. IP experts warn that interagency entanglement could weaken the patent system by inserting officials from multiple federal agencies – without patent law expertise – into the examination process. They submit that it is premature to implement such substantial changes without conducting a thorough evidence-based study.