Bill Introduced in Congress to Fix Patent Eligibility MessJune 30, 2023

Last week, Senators Chris Coons (D-DE) and Thom Tillis (R- NC), both long time members of the intellectual property subcommittee, introduced a bill entitled “Patent Eligibility Restoration Act of 2023.” This bill, if enacted, would eliminate the historical judicially created exceptions to patent eligibility.

The law on patent eligibility has been in disarray for at least a decade. Despite pleas from federal court judges, patent owners, patent lawyers, and the U.S. Department of Justice, neither the Supreme Court nor Congress has stepped up to address the issues created in large part by a trio of Supreme Court decisions in 2012-2014, Mayo, Myriad and Alice. Supreme Court Punts on Patent Eligibility

The long standing judicially-created exceptions to patent eligibility are abstract ideas, laws of nature, and natural phenomena. The proposed law will eliminate these exceptions. The bill includes “findings,” including the confusion and lack of consistence surrounding the jurisprudence of patent eligibility, which require modification and clarification.

The draft legislation expressly identifies five categories of subject matter that shall not be patentable:

(i)  A  mathematical  formula  that  is not part of an invention that is in a category described in subparagraph (B).

(ii) A mental process performed solely in the mind of a human being.

(iii) An unmodified human gene, as that gene exists in the human body.

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

(v) A process that is substantially economic, financial, business, social, cultural, or artistic. For example, process claims drawn solely to the steps undertaken by human beings in methods of doing business, performing dance moves, offering marriage proposals, and the like are not eligible.

The bill also clarifies that other requirements for patentability, specifically Section 102 novelty and Section 103 obviousness, shall not be a factor for consideration of eligibility, as they have under current case law precedent.

Retired Federal Circuit Chief Judge Paul Michel has been a vocal critic of the current state of patent jurisprudence. He supports the proposed bill, and believes it will lead to substantial increased research and development in advance technologies, an area where China has surpassed the U.S. As recently stated by Judge Michel, “everyone who cares about retaining U.S. technology leadership, competing successfully with commercial rivals, and staying safely ahead of China should speak up, making your voices heard in Congress!”

Kirk Hartung is a member of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit  www.ipmvs.com or contact Kirk directly via email at kirk.hartung@ipmvs.com.