Testimony Before the Senate Judiciary Committee, Hearing on the State of Patent Eligibility in America

Abstract

This testimony, prepared for a hearing of the Senate Judiciary Committee on the State of Patent Eligibility in America, argues that the eligibility requirement plays a crucial role in reducing litigation costs by giving courts a mechanism to quickly dismiss infringement claims that plainly lack merit. Most patent validity requirements, including novelty, nonobviousness, and adequate disclosure, are viewed by courts to turn on disputed questions of fact, meaning that they cannot be resolved until after a trial or, at the earliest, shortly before trial on a motion for summary judgment. Eligibility, by contrast, is often viewed to present a question of law, meaning that it can be — and often is — resolved at the earliest stages of the case — before the costly discovery process begins. The legislation currently being considered by the Committee, which would effectively abolish the patent eligibility requirement, would take away a crucial tool courts can use to end particularly weak cases at low cost.