Targeting remedies towards specific tech crushes innovation – the US would permanently be in catch-up mode since it’s impossible to predict innovation in advance

8. 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?

Mr. Johnson’s Answer to Question #8

Mr. Jones’ suggestion that legislation should be specifically and exclusively targeted 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” does not merit serious consideration because it is premised on the idea that such legislation could not be written and passed until after it was proven that the existing eligibility law had already failed. Under the Jones proposal, the U.S. would never catch up because the law would never address the next emerging new technology, so the resulting U.S. track record would be to have belatedly conferred patent eligibility when it no longer would matter. Patent eligibility needs to be open ended, to encourage our innovation community to invest in developing emerging technologies that don’t yet exist and/or are in their early stages of development, and to reward them with reliable patent protection without having to await new legislation for that to happen.

Mr. Jones’ second suggestion, “to develop 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 and advance in technology,” is an invitation to intermingle patent eligibility determinations with patentability determinations. This is exactly the approach that led the Supreme Court astray and got us to where we are today. 21C agrees that patent protection should be made available only to those inventions that represent “an advance in technology,” which is what Sections 102 and 103 of the Patent Act are designed to assure. 35 USC 102 currently sets forth specific patentability requirements that represent absolute bars to patentability for otherwise patent eligible inventions.21 More significantly, 35 USC 103 sets forth the significant requirement that the claimed invention embodies and represents an advance in that technology by requiring:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

This standard has served us well since its original enactment in 1952, and should not be disturbed now.