When It Comes to Patents, Congress Needs to Act

What’s eligible for a patent? This most basic question has not been directly addressed by Congress since the 1952 Patent Act. In the 60-year Congressional virtual silence, the Courts have created a Gordian Knot — a legal logic so tangled and intractable that we now need Congressional action to cut through it.
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President Barack Obama speaks during a joint session of Congress at the United States Capitol in Washington, D.C., Sept. 9, 2009.Photo: Official White House Photo by Lawrence Jackson

What’s eligible for a patent? This most basic question has not been directly addressed by Congress since the 1952 Patent Act.

While Congress is constitutionally charged with promoting the “progress of science and the useful arts,” they abdicated the intricacies of that decision to the Courts. This has been particularly problematic in the area of software patents.

In the 60-year Congressional virtual silence, the courts have created a Gordian Knot -- a legal logic so tangled and intractable that we now need Congressional action to cut through it. Here’s what I think can be done to help.

Change the Law Without Passing a Law

#### Christal Sheppard

##### About

An Assistant Professor of Law at the University of Nebraska, Christal Sheppard earned her Ph.D. in Cellular & Molecular Biology from the University of Michigan and J.D. from Cornell University. Sheppard was Chief Counsel on Patents and Trademarks for the House of Representatives Committee on the Judiciary, where she also helped draft the Leahy-Smith America Invents Act.

“Sense of” resolutions don’t require the president’s signature, and can be passed unilaterally and independently by the House or Senate. This would send a message to the courts interpreting existing laws.

In one such Sense, Congress could simply state that the Supreme Court was incorrect in interpreting Congressional intent (in the Bilski case) -- and that an invention must indeed include a transformation or a non-general purpose machine. Most of the software patents at issue in the cell phone wars would not survive this clarification.

A more preferable, less economically disruptive Sense I recommend is for Congress to simply state that patentable subject matter is not independent of other patent law requirements. How would this change anything? Simple: The fool’s errand of defining “abstract ideas” would be eliminated. Patent lawyers’ careful parsing of eligibility as distinguished from novelty and obviousness would no longer clog the Supreme Court; the law can then instead focus on excluding problematic inventions.

Don’t Try to Solve the Software Problem With Patents

Yes, that’s right. Ideally, Congress would state that software is not eligible for patent or copyright. Concurrently, it would give software its own separate category of protection – not protection by patent or copyright, but a separate sui generis protection.

This new system could be registration only, offering a scope of protection similar to a patent but only applicable for two years (or some other time frame based on average life span for the technology). Under this system, software could be broadly defined to include “instructions” or mental steps that don’t have to include a transformation or a non-general purpose machine.

This approach seems more drastic but it would actually preserve the majority of patentable inventions. And while it may reduce patent protection for some biotech and pharma inventions, the approach would not affect these industries too dramatically since the regulatory process provides some market exclusivity.

Bottom line: The current reality of leaving it up to the Courts is unsatisfactory, not to mention disruptive to innovation (and not in the good sense).

We have a unique opportunity. The Supreme Court and the Court of Appeals for the Federal Circuit in the next few months will issue decisions on what is eligible for a patent. Congress can -- and should -- influence the outcome of this decision by indicating that the Court-created knot not be untangled, but simply be tossed aside.

Editor's Note: Given the enormous influence of patents on technology and business -- and complexity of the issues involved -- Wired is running a special series of expert opinions on "the patent fix". To help move reform efforts forward, s*ome of these proposals also advocate specific Solutions to the Software Patent Problem (as part of a conference hosted by the Santa Clara University High Tech Law Institute). *

Wired Opinion Editor: Sonal Chokshi @smc90