IP Law Daily, PATENT NEWS: Senators Coons and Tillis introduce patent eligibility reform bill, (Jun 22, 2023)
By Cheryl Beise, J.D.
“The Supreme Court has repeatedly failed to clarify the law, so Congress must act,” Senator Coons said.
Senators Chris Coons (D-Del.) and Thom Tillis (R-N.C.) have introduced legislation to clarify patent eligibility law in the United States. The bipartisan proposal would overturn Supreme Court’s Alice/Mayo framework and codify certain exclusions from eligibility. The Patent Eligibility Restoration Act of 2023 expands upon a similar bill Senator Tillis introduced last year. Despite many opportunities to clarify patent eligibility jurisprudence this term, the Supreme Court declined to take up any petition.
“More than a decade after the Supreme Court waded into patent eligibility law, uncertainty remains about what areas of innovation are eligible for patent protection,” Senator Coons said in a press release. “The Supreme Court has repeatedly failed to clarify the law, so Congress must act.” Senator Coons pointed out that critical technologies like medical diagnostics and artificial intelligence can be protected in Europe and China, but not in the United States.
Senator Tillis also stressed the need for predictable patent rights. “Unfortunately, our current Supreme Court’s patent eligibility jurisprudence is undermining American innovation and allowing foreign adversaries like China to overtake us in key technology innovations,” said Senator Tillis.
The new proposal includes a lengthy findings section explaining the need for legislative action to clear up the confusion created by judicially created exceptions to patent eligibility under 35 U.S.C. § 101. “All judicial exceptions to patent eligibility are eliminated,” the bill categorically states. The bill further provides, “Any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, is eligible for patent protection,” subject to the codified exceptions.
Proposed changes to Section 101. 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.” Subsection (b) would codify five eligibility exclusions:
A mathematical formula that is not part of an invention that is in a category described in subsection (a).
A process that is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture. However, the process shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture.
A process that (i) is a mental process performed solely in the human mind; or (ii) occurs in nature wholly independent of, and prior to, any human activity.
An unmodified human gene, as that gene exists in the human body.
An unmodified natural material, as that material exists in nature.
The bill clarifies that “a gene or natural material will not be considered to be unmodified if the gene or material is: (A) isolated, purified, enriched, or otherwise altered by human activity; or (B) otherwise employed in a useful invention or discovery.”
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.”
The bill reiterates that Sections 102, 103, and 112 of title 35 will continue to prescribe the requirements for obtaining a patent, “but no such requirement will be used in determining patent eligibility.”
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