IP Law Daily, PATENT NEWS: Senator Tillis introduces patent eligibility reform legislation, (Aug 4, 2022)

By Cheryl Beise, J.D.

Proposal would overturn Supreme Court’s Alice/Mayo precedent and codify judicially created exclusions.

Senator Thom Tillis (R-NC), the Ranking Member of the Senate Judiciary Committee’s IP Subcommittee, yesterday introduced legislation to clarify and add certainty to patent eligibility law in the United States. The Patent Eligibility Restoration Act of 2022 (S. 4734) would amend Section 101 of the Patent Act to expand patent eligibility and codify the judicially created exclusions to eligibility, displacing the current Alice/Mayo two-part test currently employed by courts in evaluating whether an invention is patentable.

“Unfortunately, due to a series of Supreme Court decisions, patent eligibility law in the United States has become confused, constricted, and unclear in recent years,” Tillis said in a news release introducing the bill. “This has led to inconsistent case decisions, uncertainty in innovation and investment communities, and unpredictable business outcomes.” Tillis noted that all 12 Federal Circuit judges “have lamented the state of the law” and that in various hearing witnesses and stakeholders from a wide array of industries have testified to the “the detrimental effects of patent eligibility confusion in the United States.”

Section 101 currently provides, “Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” (emphasis added). The Patent Eligibility Restoration Act would replace the italicized clause with “subject only to the exclusions in subsection (b) and to the further conditions and requirements of this title.” The bill proposes to codify four exceptions to patent eligibility:

(A) A mathematical formula, apart from a useful invention or discovery;

(B) A process that— (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity;

(C) An unmodified human gene, as that gene exists in the human body; and

(C) An unmodified natural material, as that material exists in nature.

The bill further provides that “eligibility shall be determined—(A) by considering the claimed invention as a whole and without discounting or disregarding any claim element; and (B) without regard to—(i) the manner in which the claimed invention was made; (ii) whether a claim element is known, conventional, routine, or naturally occurring; (iii) the state of the applicable art, as of the date on which the claimed invention is invented; or (iv) any other consideration in section 102, 103, or 112.”

The bill also would define the term “useful” to mean, “with respect to an invention or discovery, that the invention or discovery has a specific and practical utility from the perspective of a person of ordinary skill in the art to which the invention or discovery pertains.”

There appears to be widespread agreement that the current patent eligibility jurisprudence has created some degree of confusion and uncertainty, particularly with regard to certain areas of innovation, including medical diagnostic tests, personalized medicine, and emerging technologies like artificial intelligence and blockchain. However, practitioners are sharply divided about how best to remedy the current problems. Many practitioners were disappointed that the Supreme Court in June declined to clarify the proper standard for determining when a patent claim is “directed to” a patent-ineligible concept by rejecting the petition for certiorari in American Axle Manufacturing, Inc. v. Neapco Holdings LLC. Senator Tillis’ legislation may serve as significant step in crafting a legislative solution to a judicially created dilemma.

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