Patents go unprotected now---outweighs on timeframe, only durable fiat can initiate policymaking to solve before the impacts happen.

On Monday, the United States Supreme Court denied inventor Jeffrey Killian’s petition for a rehearing in his case asking the Court to provide clear guidance on – or else throw out – the Alice/Mayo test for patent eligibility.

The Supreme Court denied Killian’s original petition in early October, but Killian filed a request for rehearing several weeks later.

Killian first filed a petition for writ of certiorari to the Supreme Court in April, after the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB)’s ruling rejecting claims of his U.S. Patent Application No. 14/450,042 under Section 101.

The inventor’s argument was three-fold: first, that step one of Alice/Mayo has been rendered capricious by lower courts; second, that the term, “inventive concept” in step two of Alice/Mayo is capricious; and thirdly that Alice/Mayo “should be set aside” under Dobbs v. Jackson Women’s Health Organization.

“There can be no legitimate reliance on a test that contravenes congressional intent, a comprehensive statutory framework, and constitutional principles. Alice/Mayo is a failed experiment,” concluded Killian in his petition.

Patent Eligibility and Restoration Act (PERA)

Killian filed a request for rehearing on October 21, a few months after Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced a bill, the Patent Eligibility Restoration Act (PERA), which would eliminate all judicially-created exceptions to U.S. patent eligibility law. The legislation was introduced after the initial petition was submitted in April.

In the request for rehearing, Killian argued that his petition should be granted since the legislation would eliminate all judicially-created exceptions if the bill is passed into law.

PERA includes five statutory exceptions that would not be eligible for patent protection:

(i) A mathematical formula that is not part of an invention that is in a category described in subparagraph (B).

(ii) A mental process performed solely in the mind of a human being

(iii) An unmodified human gene, as that gene exists in the human body.

(iv) An unmodified natural material, as that material exists in nature.

(v) A process that is substantially economic, financial, business, social, cultural, or artistic.

Tillis and Coons wrote in a press release that the bill clarifies that the patent eligibility standard should be broad while still including an extensive list of excluded subject matter.

Under PERA, Killian’s patent in this case would likely not fall under any of the exceptions.

Killian argued the proposed legislation “represents a challenge to this Court by de facto declaring that the judicial exceptions to patent eligibility under Alice/Mayo are nothing but badly conceived policy preferences having no constitutional basis.”

The central question that Killian posed to the Supreme Court is if PERA passes would the act be ruled as unconstitutional or is the Supreme Court currently violating the Constitution?

Killian’s attorney, Burman Y. Mathis, wrote a piece for IPWatchdog in October predicting the Supreme Court might rule PERA unconstitutional if passed.

Clarity

Ultimately, Killian’s plea to the Supreme Court was for clarity on the issue of the constitutionality of these judicial exceptions.

The CAFC ruled one of Killian’s patent applications failed to meet the threshold of Alice/Mayo because some of the claims covered an abstract idea. The Supreme Court has previously identified three exceptions to patent-eligibility principles, including abstract ideas, laws of nature, and physical phenomena.

However, in his petition for rehearing, Killian argued there is no language in Title 35 U.S.C § 101 supporting the legal principle on which these judicial exceptions are built.

“The Supreme Court has never claimed its exceptions were necessary to keep the Patent Law constitutional and never addressed a patent claim directed to a natural law or a physical phenomenon under, inter alia, § 102 to determine whether such is ‘in public use, on sale, or otherwise available to the public,’” wrote Killian.

“Either Congress has the right to pen legislation without the judiciary capriciously rewriting it from the bench or it doesn’t. The public also has the right to clarity,” Killian’s rehearing petition concluded.

What the Future Holds

With the future of PERA still up in the air, it is unlikely that this will be the last that we hear on the issue of the Supreme Court and the constitutionality of judicial exceptions.

Retired United States Court of Appeals for the Federal Circuit Chief Judge Paul Michel told IPWatchdog a month before PERA was introduced that, while the quick passage of such legislation would be unlikely, its introduction could build momentum for change.

He explained, “I think when the bills are introduced and get cosponsored by numerous people of both parties, and then they start holding hearings, that will create a huge amount of momentum, and when the courts see the momentum, they will start acting on their own – particularly the Federal Circuit.”