PERA solves – creates certainty and cabins judicial discretion

Congress should reform § 101 to reclaim the “gold standard” U.S. patent system by enacting the Patent Eligibility Reform Act (PERA). This bill abrogates the judicially-created Alice-Mayo inquiry while also codifies the longstanding legal rules prohibiting patents on truly abstract ideas, such as an idea existing in a person’s mind, or on unmodified facts of nature, such as a gene existing in a person’s body. Equally important, PERA addresses the related procedural failings by courts in applying the Alice-Mayo inquiry that have contributed to the patent eligibility quagmire and hampered this key legal engine of the U.S. innovation economy. Thus, PERA requires a court to apply in its patent eligibility analysis the longstanding legal guardrails in all of patent law that have ensured courts properly interpret and protect patents, such as the requirement that a court analyze a claimed “invention as a whole” and that a court not conflate the distinct legal requirements of novelty, nonobviousness, disclosure, enablement, and usefulness in its patent eligibility analysis.

Some commentators may nitpick at potential linguistic imperfections in PERA, and which exist in all laws enacted by Congress. Even the much-admired 1952 Patent Act contained new terms and legal requirements when it was first enacted in 1952. In fact, many of these arguments against PERA could have been made in 1952 if these same critics existed at that time and were lobbying Congress not to enact the bill that ultimately became the 1952 Patent Act. Congress should not let the perfect become the enemy of the good. Relatedly, Congress should look past the misrepresentations of what PERA clearly states and achieves, such as the false claim by the ACLU and other opponents of reform that PERA permits patents on genes as they exist in one’s body.14

The task for reform falls on Congress in ensuring the laws it enacts are properly interpreted and applied by the courts and by the USPTO. The Supreme Court created the Alice-Mayo inquiry and the resulting legal quagmire and negative impact on the innovation economy, and it has denied numerous writ of certiorari petitions over the past decade asking it to revisit or reverse its new legal inquiry for patent eligibility assessments under § 101. The UPSTO is unable to fix this problem given that it is only an administrative agency in the Executive Branch that is legally bound to obey the decisions of the Supreme Court and Court of Appeals for the Federal Circuit. Thus, it falls on Congress to achieve the necessary reform of § 101 to return the U.S. patent system back to its original constitutional function in “promoting the Progress . . . of the useful Arts.”15