Foley & Lardner LLP partner Courtenay Brinckerhoff appeared before the U.S. Senate Committee on the Judiciary Subcommittee on Intellectual Property on January 23, 2024, offering insight on the need to restore certainty to U.S. patent eligibility law and the Patent Eligibility Restoration Act of 2023 (PERA).
In her live testimony, Brinckerhoff touched on international inconsistency in what can be patented, the particular impact of the judicial exceptions to patent-eligibility on microbial technologies, and ongoing uncertainty due to continued expansion of the judicial exceptions. For example, she pointed out that since the Supreme Court decisions in Mayo, Myriad, and Alice, there are inventions that cannot be patented in the U.S. that can still be patented in other countries, including Europe, Japan, and China. These inventions include most isolated natural products, diagnostic methods, and methods of detecting new diagnostic markers.
“PERA would bring the U.S. eligibility back in line with patents that can be granted in other countries,” Brinckerhoff said.
Brinckerhoff also explained that microbial technologies are uniquely impacted by the exclusions from product patents because of the biological deposit requirement that applies when a patent claims methods using isolated bacteria. Discussing this imbalance, Brinckerhoff commented that “requiring a physical specimen but not granting an equivalent scope of protection disincentives patenting in this area and makes trade secret protection more attractive.”
“We know now that the Supreme Court is not going to fix these issues, so it’s important that legislative action like PERA be taken,” Brinckerhoff concluded.
Summaries of the hearing featuring Brinckerhoff’s comments were published in the IP Watchdog article, “Witnesses Clash Over Potential Pros and Cons of PERA in Senate IP Subcommittee Hearing,” and the Law360 article, “Senators Hear Praise And Worry About Patent Eligibility Bill.”
To view the full video of the hearing, click here.
To read Brinckerhoff’s full written testimony, click here.