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Section 112 revision must be clearer and future-proof say stakeholders

Counsel from Novartis, Fallbrook Technologies, InterDigital and the Software and Information Industry Association reveal how they would like to see reform to written description requirements handled in the US

While there was considerable support for Section 101 reform at last month’s US Senate IP Subcommittee hearings, proposed changes to Section 112 turned out to be much more controversial.

Counsel at Novartis, InterDigital, Fallbrook Technologies and the Software and Information Industry Association (SIIA), who spoke at the inquiry, say they were keen to express concerns over whether the language covering 112 written description requirements was too restrictive in the draft bill on reforming patent eligibility.
The draft sets out that an element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover those described in the specification and equivalents thereof.  
Sources say this wording would forcibly narrow the scope of claims by determining that functional claims were limited to the corresponding structure disclosed or the equivalent. 
They add that they were also keen to communicate fears that the bill’s wording could create future problems beyond what has already been experienced in the 112 issue.
“There was interest in modification to 101 and broad support for that, but not much support for the 112 modifications,” says Kim Chotkowski, head of licensing strategy and operations at InterDigital in Pennsylvania. “112 was certainly an issue that people did not converge on, specifically the implications on claim interpretation.”
The legislation has been proposed by Senators Chris Coons and Thom Tillis, the former a Democrat representing Delaware and the latter a Republican representing North Carolina, and was debated at hearings in the US Senate between June 4 and 11 2019.
It is now likely that the senators will revise the language around Section 112 in light of the testimony given.

Doubts persist

Speakers from the software industry argued that the new wording could force inventors to describe every structure in a machine-implemented invention; a seemingly impossible task when one considers that there are 571 coding languages with multiple ways of saying the same thing.
Tech companies were also worried that the language was not strong enough to weed out overly broad software and business method claims.
“With respect to 112, the change is helpful but insufficient to overcome other problems,” says Chris Mohr, vice president for IP at the SIIA in Washington, DC, which represents companies such as Google, Citi and Adobe. “The bill sets out a modest improvement over the existing rule of law – and in light of other problems in terms of scope of application, it is helpful but not enough to overcome our doubts.”
Similarly, speakers representing the biotech and pharmaceuticals industries were concerned that the language of the reform was not enough to resolve the written description problems that exist for human therapeutics, particularly antibodies.
Patent Strategy reported in May 2019 that the possession test, established by the US Supreme Court’s 2017 judgment in Amgen v Sanofi, makes it difficult to write patent specifications for antibodies that demonstrate possession sufficiently while ensuring that the invention is not easy to design around.
Corey Salsberg, global head of IP affairs at Novartis in Washington, DC, says the 112 provisions were included in the bill largely to alleviate software concerns about overly broad abstract claims, and that his company would like to support an approach that addresses those concerns and ideally get the high-tech industry on board with broader 101 reform.
He adds, however, that in doing that, the biotech and pharmaceuticals industries are keen to ensure they do not create new problems for human therapeutics.
“We must think about how the limiting of functionally-claimed elements to the structures we disclose might affect things such as antibodies and other technologies where it is difficult to specify what you structurally claimed,” says Salsberg.
He adds that there is a question for his company of what ‘equivalent’ means: “It is not clear whether that term refers to the doctrine of equivalents for infringement or something else.”
Jeff Birchak, vice president of IP at Fallbrook Technologies, says that while Coons and Tillis have been clear on what they are trying to do with 112 – by taking the functional language in claims that lack structure and limit the scope of those claims – he suspects this restrictive text has emerged because the problem with the current language was not sufficiently defined.  
“We have not seen good examples of the problem that needs to be solved, nor a well-defined problem. The proposal on 112 is that awkward proposal you get when you do not have a well-defined problem.”
He adds that the senators will undoubtedly continue to do their good work and try to address the 112 problems raised at the hearings, including by creating a more useful definition of what they mean by broad functional claims and by defining the issues associated with 112 more carefully.

“Great danger”

Since the Senate hearings came to a close, there have been calls to remind Coons and Tillis to ensure that changes to Section 112 do not pose a danger to the patent system. Some have gone further to demand that no changes are made at all.
Mark Marrello, partner at Imperium Patent Works in California, urged readers of the IP Watchdog blog last week to send prewritten text to Coons and Tillis asking them to keep the “established and efficiently-working Sections 100 and 112.”
“Now that the Senate Subcommittee on IP has concluded its hearings on patent eligibility reform, it appears that the draft changes to Sections 100 and 112 are the last great danger in the overall patent eligibility debate, and we must not let our guard down,” said Marrello.
Now that the July 4 celebrations in the US are over, a new version of the bill is expected to come out shortly.
Stakeholders in the biotech and software spheres will be quick to look at the new bill and mount their opposition to anything that might inhibit patent protection now or in the future.

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