Patent Eligibility Aff - Michigan 2024 STARTER

Patent Eligibility Affirmative
This affirmative expands eligibility by passing (most of) the provisions in the Patent Eligibility Restoration Act. This is a good affirmative, but the background for it is very complicated.
Current patent eligibility law
Patent eligibility is governed by the Patent Act, which has four relevant sections:
§ 101 – this is the most important, it governs “subject matter eligibility”. It states:
Whoever invents or discovers any new and useful (1) process, (2) machine, (3) manufacture, or (4) composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
This means anything that is a new process, machine, manufacture, or composition of matter is patentable (although it has to be new and useful as well).
**§101 is a threshold test. In other words, it’s only the first of several hoops a patent application must go through. Eligibility does not mean patentability. Eligibility means that the application can proceed to the other sections of the Patent Act. It is very important to remember this because it’s a vital component of 2ac answers to some disadvantages and case turns.
§ 102 – novelty requirement. The invention has to be new; it can’t be claimed on a previous patent.
§ 103 – Nonobvious requirement. If the differences between the claimed patent and prior art is obvious to a person with ordinary skill in the art, it is not patentable.
§ 112 – Disclosure requirement. The patent application must describe the invention well enough that a person of ordinary skill in the art can create the invention.
The problem
The affirmative claims that the problem with patents is a series of four Court decisions from 2010-2014, called the “Alice-Mayo” framework, or just Alice.
The four decisions are:
Bilski v. Kappos (2010), Mayo Collaborative Services v. Prometheus Laboratories (2012), Ass’n for Molecular Pathology v. Myriad Genetics (2013), and Alice v. CLS Bank (2014).
Alice and Bilski were about software patents; Myriad and Mayo were about biotech patents.
The issue with these decisions is they created three judicial exceptions to § 101, that don’t exist in the law – the Court just invented them. A patent is ineligible if it falls into one of these categories:
Abstract ideas
Laws of nature
Physical phenomenon
The aff claims this is a problem, because every invention in some way overlaps with an abstract idea, law of nature, or physical phenomenon. The effect of the Alice framework was to create uncertainty into what is eligible, which reduced the number of patent applications, and increased the number of denials of patents. For example, a court denied eligibility to a new type of garage door opener, claiming that it was partly based on a law of nature. So pro-patent people are very upset about this.
Patent Eligibility Restoration Act
The central thesis of the affirmative is that the pre-2010 status quo was great for patents and innovation, but that the Supreme Court greatly restricted patent eligibility. The plan would return the US to the pre-2010 eligibility standards by eliminating the judicial exceptions altogether.
It is based on a proposed law called the “Patent Eligibility Restoration Act”. This law would do three things (the plan doesn’t do all of it):
Removes the word “new” from § 101 because it’s already addressed in § 102. This plan doesn’t do that because the argument in favor of doing this is dumb.
It eliminates the judicial exceptions entirely
It codifies new exclusions to eligibility:
--mathematical formulas - may not obtain a patent for a mathematical formula that is not part of a claimed invention
--business methods - may not obtain a patent for a process that is substantially economic, financial, business, social, cultural, or artistic if the process can be practically performed without the use of a machine or manufacture
--mental and natural processes - can’t obtain a patent on a mental process performed solely in the mind, or a natural process that exists in nature without human intervention
--human genes - may not obtain a patent on an unmodified human gene, as it exists in the human body
The plan doesn’t do #3. That might seem like a huge omission, but those new exclusions don’t actually accomplish anything. For example, mathematical formulas should not be patentable, but they wouldn’t have been patentable anyway under prior interpretation of § 101.
Including those exceptions in the plan would probably not be topical, and they definitely would not be defensible, because they don’t do anything. If you’re looking for a solvency advocate that accounts for this plan without the exceptions, you have two options:
--1ac Rafetto. While he likes PERA, his proposal is much broader, and his argument is that other sections (102, 103, 112) prevent weak patents. He in fact says it’s unlikely the overall number of patents changes, even with the broad proposal
--the Morinville evidence in the solvency extensions is a good approximation of the plan
Definitions
Patent trolls – sometimes referred to as Non Practicing Entities (NPEs) or Patent Assertion Entities (PAEs). These are companies that buy patents, but don’t use them other than to license the invention to others and sue in the case of infringement.
Patent thickets / anti-commons – these terms are interchangeable, and they refer to the fact that some sectors of the economy have so many patents that innovation is impossible. For example, the iPhone has 1298 patents, which makes it hard for a new market entrant to develop a competing product. The fragmentation of patents across different types of technology means someone trying invent would have to license dozens or hundreds of patents first.
Evergreening – companies will design follow-up products that are extremely similar to their patented products in an attempt to extend the term of their patent
Patent holdups – this refers to the practice of overcharging for patent licenses. It’s related to thickets because it’s potentially much worse for technology that requires many licenses from many different patent holders. It usually applies to SEP-intensive industries.
SEP – Standard Essential Patents. They govern technology that is essential to standardize products across industries (like USB ports, for example).
FRAND - Fair, Reasonable And Non Discriminatory. It’s a licensing principle applied to SEPs – if a company commits to developing a standard for particular tech, they can also commit to licensing the patent under FRAND
Future research directions at camp
There are major aspects of this affirmative that are undeveloped.
A huge part of this area of the topic is patents good/bad, and I feel like I only scratched the surface of the literature. The same is true for prizes and R&D.
There is a possible international law advantage – the Rader evidence in the 1ac makes a broader claim about international law in that article, and there are many articles that talk about patent eligibility in the context of US international IP leadership.
The greatest liability of the affirmative is PICs. If the affirmative overturns 4 Court decisions, it should at least have a defense of why overturning each is important, and add-on advantages related to each one. There’s a start to that in this file for the Myriad and Alice decisions, but more work needs to be done.
Narrowing the scope of the affirmative is another option. There is a large body of evidence advocating to only overturn Myriad, or even just part of Myriad. The issue with those affirmatives is that advantage ground is far more limited, and it’s much more difficult to access the uncertainty claims, so it will take a lot of work to create credible advantages. But in many ways, it’s a stronger version of the affirmative because you won’t be responsible for defending so much.
A very good article to start this work is:
Josh Saul, 2024 - J.D. Candidate, 2025, Fordham University School of Law; Ph.D., 2021, Massachusetts Institute of Technology; B.A., 2014, University of California, Berkeley. “GENE PATENTS: STRIKING THE RIGHT BALANCE BETWEEN INCENTIVE AND INNOVATION” FORDHAM LAW REVIEW, Vol. 92: 2765, May, https://fordhamlawreview.org/wp-content/uploads/2024/05/Vol.-92_29_Saul-2765-2804.pdf
Saul advocates human gene patenting, so there are two great cards in the article for why his proposal doesn’t link to the pathogen patents DA. There are a few more law reviews that support this approach, and you can find them in the footnotes that Saul lists.
1AC
Plan
The United States federal government should remove judicial exceptions to patent subject matter eligibility.
1AC – competitiveness
Contention 1 is competitiveness
Patent subject matter eligibility is determined by section 101 of the Patent Act. The Supreme Court, in its “Alice-Mayo” cases created judicial exceptions to subject matter eligibility. These create uncertainty and unpredictability in patent approvals
Adam Mossoff, 24 - Professor of Law, Antonin Scalia Law School George Mason University. Statement before the Committee on the Judiciary, Subcommittee on Intellectual Property, United States Senate “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System” 1/24, https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_testimony_-_mossoff.pdf //DH
As I have stated in past scholarship, testimony before Congress, amicus briefs, and agency comments, the U.S. patent system has been under an extensive amount of stress from all branches of the federal government for over fifteen years. The Supreme Court has been deciding patent cases at a rate not seen for almost a hundred years,2 changing the law in all aspects of the patent system. Among these numerous changes were four decisions between 2010 and 2014 on patent eligibility doctrine under § 101.3 These decisions severely restricted the inventions and discoveries that have long been considered patentable for over two centuries in the U.S. patent system.
These four decisions culminated in the “Alice-Mayo inquiry”—a two-factor legal framework that courts and the U.S. Patent & Trademark Office (USPTO) have applied since 2014 in assessing whether an invention or discovery is patentable subject matter under § 101.4 The Alice-Mayo inquiry has created a tremendous amount of uncertainty for innovators and severely restricted the patent eligibility of high-tech and biopharmaceutical innovations. It has had a negative impact on both inventors and the companies working in the innovation industries that invest millions of dollars in creating the new products and services that drive economic growth, job creation and higher standards of living. Thus, it is undermining the longstanding comparative advantage by the U.S. in the world in securing reliable and effective patent rights for all innovators.
The Alice-Mayo inquiry is one of many recent changes to the U.S. patent system that has called into question the longstanding U.S. claim to a “gold standard” patent system as compared to the rest of the world.5 As a result of the Alice-Mayo inquiry, the USPTO has denied patent applications or courts have invalidated issued patents in cutting-edge discoveries in medical care, such as treatments for breast cancer, diabetes, and strokes, among others.6 The USPTO appears to have corrected course in adopting its 2019 patent eligibility guidelines,7 but these patent examination guidelines are not a panacea. These regulatory guidelines can be easily repealed by a future USPTO director, and they have had no sway with the courts in reviewing the patents issued by the USPTO. Courts continue to apply the Alice-Mayo inquiry to invalidate patents on classic industrial technologies, such as an invention on a new method of manufacturing automobile axles,8 and, in another notorious case, the courts applied the Alice-Mayo inquiry to conclude that the invention of a new remote-controlled garage door opener is an unpatentable abstract idea.9
This is an alarming shift from the historical approach of the U.S. in securing reliable and effective patent rights in new innovations, which has been a key driver of economic growth in the U.S.10 It is even more concerning given the rise of a modern global competitor like China that seeks to compete technologically and economically by developing its own innovation economy, not just defeat the U.S. through military conflicts. Historically, the U.S. became the home to innovators and the R&D financing that drove technological and economic revolutions from the Industrial Revolution to today’s mobile revolution.11 Even with period upheavals in U.S. patent policy over the past two centuries, the U.S. forged ahead when other countries hesitated in securing patents in new discoveries and inventions, such as in biotechnology and computer software in the 1980s.12 Today, China and European countries are now the ones forging ahead and securing reliable and effective patents in innovation that the U.S. no longer reliably or effectively protects due in part to the closing of the doors to its patent system by the Alice-Mayo inquiry.13
Even if Alice-Mayo is legally predictable, it generates investment-killing uncertainty about patent protection and drives investment overseas
Adam Mossoff, 24 - Professor of Law, Antonin Scalia Law School George Mason University. Answers from Adam Mossoff to Questions for the Record from Senator Thom Tillis, Senate Committee on the Judiciary, Subcommittee on Intellectual Property, United States Senate “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System” 1/24, https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_qfr_responses_-_mossoff.pdf italics in original //DH
6. An article was published late last year analyzing a decade’s worth of patent eligibility decisions by the Federal Circuit, and they concluded that “under one of the most well-established metrics for measuring the predictability in the law, [Section] 101 proved to be more predictable than other areas of patent law over the past decade.” This is the opposite of what is claimed by many industry experts and even some current and former federal judges. How do you explain this disconnect?
As is common with many academic articles, the conclusion by Professors Nikola Datzov and Jason Rantanen only appears superficially to contradict the many complaints about the Mayo-Alice inquiry by Federal Circuit judges, lawyers, inventors, and representatives from companies that rely on patents in their business models. On closer inspection, the Datzov and Rantanen analysis confirms the legitimate calls for reform by these numerous judges, lawyers, industry stakeholders, and commentators. For example, Datzov and Rantanen state that “the rate at which the Federal Circuit reaches an ultimate outcome that the patent claims are not directed to eligible subject matter has fairly consistently remained around 90% since 2014.”23 I and many other witnesses who testified at the hearing on January 23, 2024, as well as a majority of the witnesses who testified at the three days of hearings in 2019, reported the same number—because this excessive rate of patent invalidation under the Mayo-Alice inquiry is a problem. Economists and empirical researchers have long recognized in civil litigation that if appeals courts are reaching the same decision in 90% of the cases, this represents an unbalanced doctrine or legal decision-making institution that is not properly functioning according to normal operating conditions in a legal system.24 In sum, something is out of whack institutionally, legally, or both; in this case, it is the Mayo-Alice inquiry.
Beyond the blithe acceptance of a 90% invalidation rate for patent claims as representative of normal operating conditions in courts, there are several problems with the article by Professors Datzov and Rantanen. First, Professors Datzov and Rantanen conflate legal unpredictability and commercial unpredictability. As I have explained in numerous amicus briefs in patent eligibility cases over the past decade, the Mayo-Alice inquiry is indeterminate insofar as courts are using it to invalidate patents on inventions that have long been upheld by courts as patent eligible before the Mayo-Alice inquiry was created by the Supreme Court. I have also acknowledged in these amicus brief that the Mayo-Alice inquiry is predictable in a more narrow sense: courts almost always invalidate patents as ineligible when they apply this legal framework. This creates unpredictability for innovators in the biopharma and high-tech sectors who rely on the patent system to make long-term investments costing billions of dollars.25 Innovators cannot reasonably predict that they will receive reliable and effective property rights to secure a return on their investments in creating and commercializing new innovations; in fact, their only safe prediction is that there is a 90% chance their patent will be invalidated by a court. Thus, a reasonable businessperson concludes not to make the investment in the new technology or drug, or to shift the investment overseas to a country in which they can be certain they will receive legal protection for their fruits of their inventive labors.
This is what one scholar has identified as “investment-killing uncertainty,” which he rightly recognizes as the primary form of uncertainty in a legal system that “creates a problem that must be addressed by policy makers and suggests appropriate action” in enacting reform.26 Investment-killing uncertainty, which can be the result of a legal doctrine being applied consistently, is the unpredictability and indeterminacy that lawyers and economists speak about when they speak of the function of property rights in incentivizing investments and commercialization activities (as I explained above in my answer to Question 3(a)). Datzov and Rantanen agree with judges and others calling for reform when they find a 90% invalidation rate in the Federal Circuit’s application of the Mayo-Alice inquiry, and this agreement confirms there is an unbalanced, anti-patent bias inherent in the Mayo-Alice inquiry that must be reformed, just as nonobviousness doctrine required reform in the 1952 Patent Act given the high rates of invalidation of patents under the Supreme Court’s “flash of creative genius” test.
Datzov and Rantanen’s questionable decision to blithely accept massively lopsided decisions lacking dissents as evidence of investment-spurring predictability is further confirmed by their review of the Patent Trial and Appeal Board (PTAB) decisions. Datzov and Rantanen’s review of the Federal Circuit’s affirmance rate of the PTAB’s § 101 decisions is especially relevant given the PREVAIL Act, and the STRONGER Patents Act before this, introduced by members of this committee. The PREVAIL Act imposes important procedural and substantive reforms on an agency tribunal that many lawyers, judges, and stakeholders in the innovation economy have repeatedly identified as institutionally and legally unbalanced, and which the Federal Circuit has not reined in. Yet, Datzov and Rantanen find nothing wrong with a 100% affirmance by the Federal Circuit of PTAB decisions invaliding patents under § 101 in nine years over a span of ten years (2012-2022)—there was only one year the rate dropped to 93.3% (2020). Datzov and Rantanen conclude that “PTAB judges have been doing a good job of correctly and predictably determining when the patent claims are ineligible.”27 Given the extensive, necessary reforms of the PTAB in the PREVAIL Act, this is a surprising claim that further highlights the problematic nature of the study by these two academics.
There is much else that can be said about this study beyond its fundamental and improper equivocation between difference senses of predictability in the patent eligibility debates. For reform advocates suppor

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