Another legislative proposal from a major intellectual property organization seeking to calm the 101 waters, this time from AIPLA

By: Robert Lord and Kelly McKinney


The current state of § 101 jurisprudence in the United States (“U.S.”) is shrouded in confusion and uncertainty.  Indeed, decisions made by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, as set forth in Alice and its progeny, have been inconsistent and lack clear guidance on how to analyze patent eligibility under 35 U.S.C. § 101.  This has proven to be problematic for many, including innovators, patent practitioners, U.S. patent examiners, and professors.  Such confusion is not helpful to the U.S. patent system.

Recognizing a need for more clarity, on May 12, 2017, the American Intellectual Property Law Association (“AIPLA”) proposed a legislative solution to replace the existing Alice framework on patent eligibility.  The proposal clearly defines the exceptions to patent eligible subject matter, and emphasizes the importance of the “gatekeeping” function of 35 U.S.C. § 101.  Specifically, AIPLA proposes to amend 35 U.S.C. § 101 to state the following:

35 U.S.C. § 101–Inventions Patentable

(a) Eligible Subject Matter.–Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.–A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.–The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

  • The full Legislative Proposal and Report from the AIPLA may be found here.

Recognizing the same problems as the AIPLA, other organizations, such as the Intellectual Property Owners Association (“IPO”) and the American Bar Association (“ABA”), also have prepared legislative proposals concerning patent eligibility.  Links to two proposals, which are along the same lines as the AIPLA proposal, are found below.

  • The full proposal from the IPO may be found here.
  • The full proposal from the ABA may be found here.

We find it promising to see collaboration within the AIPLA and other legal organizations to present a workable solution to the problems created by the U.S. judicial system and its interpretation of the current statute on patent eligibility.  Only time will tell whether the U.S. Congress is amenable to adopting such proposals in view of the other distractions currently occupying its time.