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Should Congress Amend Section 101?

June 22, 2015

Fenwick & West partner Robert Sachs' blog post, “22 Ways Congress Can Save Section 101,” was featured in a Managing Intellectual Property article on amending Section 101 of U.S. patent law (US Code: Title 35). Many IP practitioners are dissatisfied with 101 and remarks at the 2015 BIO International Convention touched off discussion about amending the section.

Sachs' blog post, published several months prior to the convention, proposed some of the changes the community is now discussing.

Section 101 maintains that: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title,” as quoted by Managing Intellectual Property.

Sachs' post published on Fenwick’s popular Bilskiblog and on Law360, called for Congress to amend Section 101 to stop the rash of patent invalidation that broke out following the June 2014 Alice Corp. Pty. V. CLS Bank Int’l decision. At the time of Sachs’ writing seven months after Alice, more than 100 patents had been revoked due to claims of ineligible subject matter.

"As delightful as this trend may be to patent defendants, it has created enormous consequences for companies that rely on patent protection to protect crucial technology assets, including the loss of business contracts, disrupted partnerships, and increased difficulty in obtaining venture funding," Sachs wrote.

He proposed 22 amendments to U.S. patent law including modernizing 101 to acknowledge digital technology and altering Section 282 to explicitly state that its presumption of validity applies to Section 101.

Sachs also recently published a follow-up blog post that analyzes the impact of Alice on U.S. patent law one year after the decision.​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​​