Congressional Bill on Patent Eligibility Receives Judicial SupportNovember 23, 2022

Proposed legislation to fix the patent eligibility mess has been endorsed by two retired judges from the Federal Circuit Court of Appeals, former chief judge Paul Michel and former judge Kathleen O’Malley. The bipartisan legislation, introduced in August and entitled The Patent Eligibility Restoration Act, is co-sponsored by Senator Thom Tillis (R – N.C.) and Senator Chris Coons (D- Del.).

The bill intends to overrule several Supreme Court decisions which have been blamed for creating havoc in the U.S. patent system. The cases include Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012).

These judges describe Myriad as precluding patent eligibility for isolation of human genetic sequences outside the human body, even though such research and development may find cures for various diseases, including cancer. They describe Prometheus as a barrier for inventions on medical diagnostic testing. Collectively, these Supreme Court decisions have created a huge disincentive for investments in these industries.

Michel and O’Malley characterize the U.S. patent system as being the main engine for innovation in America, and a major factor in a strong economy. Weakening of patents by a decade of adverse patent decisions from the Supreme Court has lead to the loss of billions of dollars of investment in cutting edge industries (including artificial intelligence), the loss of jobs, and lost opportunity for improved products and processes for the public benefit.

The Supreme Court had had many chances to grant certiorari to reconsider patent eligibility. Despite years of requests for eligibility clarification from district courts, the Federal Circuit, patent practioners, inventors, and other organizations, and positive recommendations for review from the Justice Department, the Supreme Court has refused to take up the issues.

Michel and O’Malley lament the loss of transformational inventions in many sectors and emerging industries. They conclude that it is urgent for Congress to correct the law, so as to reverse the trend of investors going overseas for cutting edge work.

As with all legislative proposals, there are critics, but Tillis and Coons are optimistic that their Act will fix the judicially created confusion in patent eligibility law. As they note, patent rights are created in the Constitution, and have driven innovation for more than 200 years. Senator Coons has stated that IP “gold standard” has been eroded, and that predictability, defensibility and enforceability needs to be restored.

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

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