Proposed Framework Isn’t Just About Fixing 101

Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.

The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech.

The draft broadens 35 U.S.C. § 112(f) to remove the requirement that a claim be expressed as “means for” or “step for” in order to be to be limited in functional scope to the examples in the patent specification. Williamson v. Citrix Online, LLC, 792 f . 3d 1339, 1348 (Fed. Cir. 2015) (en banc). Tech has complained about the expansive breadth accorded to computer-implemented inventions for years. While the PTO has focused on the use of “nonce terms” in functional claiming, the courts are often distracted by the Williamson presumption (i.e., the lack of “means for” or “step for” language in many such debates).

The revised 112(f) would strip the “magic word” requirement from the statute to mandate 112(f) interpretation any time the elements of the claim are “expressed as a specified function without the recital of structure, material, or acts in support thereof,” the draft states that such functional claim elements are to be construed to cover the “corresponding structure, material, or acts described in the specification and equivalents thereof.” (i.e., given means-plus-function scope)

Post-Berkheimer, the value of 101 as a defense for Tech has been somewhat blunted. This is because victory on summary determination is now a much heavier lift. With the PTO pushing its own, patent friendly view on 101, the Tech Lobby plainly sees the writing on the wall. So, getting concessions on matters that will help Tech in its patent disputes, but not hurt traditional Bio/Pharma disputes, is a shrewd move.

There is already a compromise built into the current legislative proposal. With three additional stakeholder meetings in quick succession in early June, I am expecting a bill to be formally introduced, probably in both houses of Congress simultaneously, later this summer. There is a realistic shot at getting 101 legislation passed this year.

So, what do you do if your patent has been dinged under current form of 101 in the meantime? More on that next week.

Scott A. McKeown is an author of the Patents Post Grant