What Is Patentable Matters. AUTM Helps Make the Case

By Mike Waring

August 14, 2019
The Founding Fathers – even 200+ years ago – understood the power of intellectual property and enshrined it in the US Constitution. During his presidency, Abraham Lincoln likened the patent system to “adding the fuel of interest to the fire of genius.” And recent reports – including the one issued in June, 2019 by AUTM and the Biotechnology Innovation Organization (BIO) – point to the huge impact patented discoveries have had on our economy, our health and our national security.
 
Yet in recent years, several court decisions have added uncertainly about what may – or may not be – patent eligible. These new interpretations have created numerous issues for scientists – many of whom are working on new diagnostic tests for disease or software applications that will benefit the nation. The part of patent law in question is known as Section 101.
 
Members of the Senate Judiciary Committee began a review of the issue in January, led by IP Subcommittee Chairman Thom Tillis (R-NC) and ranking member Chris Coons (D-DE). Through a series of listening sessions and three days of hearings in June, they heard from nearly every sector of the economy about the issue and what might be done to make determining patent eligibility clearer for the Patent Office examiners and for the courts writ large. Indeed, a recent law newsletter indicated that judges on the Federal Circuit (where patent cases are appealed) are pleading with Congress to help determine in a more concentrated way how they ought to look at patent eligibility. 
 
Throughout this process, AUTM – in coordination with AAU, APLU, COGR and other associations – has provided feedback. Universities have also provided feedback, including some from medical campuses that have raised various concerns about how potential legislation might affect future innovation.
 
With Congress out of Washington until the fall, committee staff are now reviewing the feedback they have received from all sides and are looking to re-draft potential legislation to help clarify patent eligibility. As new drafts come forward, there is hope that the broad higher education community will be able to coalesce around some basic principles and shape any changes in law to make eligibility clearer without creating unintended consequences.
 
Mike Waring is the Chair of AUTM’s Advocacy and Alliances portfolio and Executive Director of Federal Relations for the University of Michigan.