UC Hastings Law Professor and Associate Academic Dean Jeffrey Lefstin testified before the Senate Committee on the Judiciary, Subcommittee on Intellectual Property this week about patent eligibility issues facing inventors in the U.S.
The hearing was titled “The State of Patent Eligibility in America: Part I,” and was part of a series of hearings held by Senators Thom Tillis and Chris Coons on proposed patent reform legislation. On the panel with Lefstin were Paul Michel, the former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; Q. Todd Dickinson, former Under-Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office; David J. Kappos, former Under-Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office; and Charles Duan, director, Technology & Innovation and Senior Fellow, R Street Institute.
In his opening remarks, Lefstin addressed the Supreme Court’s recent Section 101 jurisprudence in historical perspective. He told the Committee that “scientific discoveries in the abstract have never been patentable. But for most of the history of the U.S. patent system, practical applications of discoveries have been eligible for patents if the inventor met the other requirements of the patent laws.”
He argued the requirement for inventive application imposed by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories has “virtually eliminated patent protection for new diagnostics and other kinds of discovery-based inventions,” and that this requirement discourages innovation in certain key scientific fields. Lefstin went on to tell the Committee that the Court’s framework disregards the text and history of the Patent Act, and was founded on a severe misreading of historical precedent.
Lefstin specializes in the history of patent law and biotechnology patent law. His work on patent eligibility has been cited by several decisions of the U.S. Court of Appeals for the Federal Circuit, most recently by Judge S. Jay Plager in a decision in Interval Licensing LLC v. AOL, Inc. In 2017, Lefstin, Peter S. Menell of UC Berkeley Law School, and David O. Taylor of the SMU Dedman School of Law convened a day-long workshop that brought together prominent academics, practitioners, industry lawyers, and government officials to assess the Supreme Court’s patent eligibility jurisprudence and consider proposals for legislative reform.