It's an innovation kill switch and because it creates unique, targeted protection it can’t cabin judicial authority generally – so it can’t solve uncertainty

5. Mr. Jones’s testimony included proposed alternative approaches to addressing concerns with the state of Section 101. He proposed the two possible alternative approaches: (1) “[] a narrow solution that is targeted specifically and exclusively at any areas of technology for which the current jurisprudence has created significant and empirically demonstrable impediments to obtaining patent protection to the extent that such impediments can be shown to have resulted in clearly insufficient levels of R&D investment.”; (2) “a broader legislative solution that tethers patentability to its underlying policy purpose by explicitly limiting the availability of patent protection to only those inventions that embody an advance in technology.” What are your views on these proposals as compared to the approach of PERA?

In my view, neither of the solutions that the High Technology Inventors Alliance proposes would do any more than continue the status quo, except for the “narrow solutions” to specific rulings. This in turn would mean that each time a district court judge finds a bizarre theory on which to posit ineligibility, those of us interested in a rational and protective legal system would have to come back to Congress. The key value of PERA is that it restores clarity surrounding Congressional intent as to what is eligible for patent coverage, leaving to the courts and Patent Office the traditional comparison of an invention with the prior art and determination of adequacy of claims and disclosure.

It is also worth noting that the patent system already requires that inventions reflect “advances in technology.” That is precisely why we look at the prior art to determine whether an invention is just an obvious variation on the prior art. PERA would still demand that the invention rises to the level of being a patentable advance in technology. One of the major problems with the Supreme Court’s jurisprudence as to eligibility is that the court began to conflate eligibility with the other provisions in the patent law. This is precisely what led to the massive confusion that exists today in the lower courts. Exemplary is the American Axle case, where the two-judge panel of the Federal Circuit held that the “claims” did not enable the invention, a requirement of section 112 that does not relate to claims. This bizarre interpretation is nonsense, but is what was wrought by Alice and Mayo.

To put it bluntly: both of the proposals suggested are completely nonsensical. Solution 1 argues that we should wait to see what harm arises before solving for it in a clear way that PERA allows. In some cases years of harm may have arisen by the time one could “empirically prove” that the harm had been done. And who would be motivated to prove it? Nobody. That solution is a fancy sounding poison pill or kill switch.

Solution 2 is addressed above, but if one were to take it one step further and require that the patent office determine the degree of “advance” required, then that would argue that one can read a patent application and foresee the future – as to what impact the subject technology, or its future iterations, will have on society and the economy. It is the job of the patent system to protect novelty and invention. It is not to predict the future.