Should the pending patent legislation in Congress be amended to include a provision to reinstate patent applications that were lapsed by their owners due to §101 rejections? It is an interesting question. The need for legislation and public outcry over §101 makes clear that the Supreme Court and Federal Circuit made a mess of §101. Unsuspecting inventors disclosed their inventions to the public via their patent applications. Many subsequently abandoned their applications when faced with a drawn out battle over §101 issues. So, should Congress now reward those inventors by allowing their inventions to be patented? It could easily be accomplished to some extent by making an inventor show that they were facing a §101 rejection in an office action at the time the application was allowed to lapse. They would then need to complete prosecution under the new (hopefully) statute.
There’s an obvious downside to this. Others who have entered the market — particularly upon seeing a published application lapse — would be disadvantaged. I suppose the middle ground would be to make those who already had taken steps to practice a lapsed application immune from infringement.
The prospect of such a provision creates an interesting speculator’s market. All those abandoned and currently worthless applications could be snapped up with the prospect of becoming valuable if Congress were to enact such a provision.
What about patents invalidated by CBM’s or the courts for §101 reasons? After all, if they were being litigated, they were likely pretty valuable. Should there be a provision to reinstate them if they can be shown to satisfy a new patent eligibility standard and to meet the other requirements of patentability? What kind of prospective value would the invalidated patent in Ariosa v. Sequenom have at this point, for example?
Would the Director have authority to apply a new standard retroactively, if he should so choose? Historically, the USPTO seems to have had broad discretion to revive patents that missed their maintenance fee payments, for example. If I remember correctly, those decisions are not reviewable.