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IP Alert: The Patent Eligibility Restoration Act of 2023

June 26, 2023

It’s hardly a secret that certain Supreme Court decisions within the past ten years have roiled and muddied everyone’s understanding of what constitutes patent-eligible subject matter. Some things have always been understood to not be eligible for patenting (think things like a human being, a mathematical equation as such, or an observed natural phenomena such as gravity).

Without belaboring the point, the aforementioned Supreme Court decisions purported to present patent-eligibility tests that were poorly defined and/or that seemed to be conflated with other tests for patentability that are based upon the prior art. Various studies reveal that hundreds of patents have been held invalid in whole or in part by the federal courts and that tens of thousands of patent applications were left abandoned for failure to get past these vague requirements.

This state of affairs has not gone unnoticed by members of Congress. Most recently, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023.

Put simply, this Act proposes to do away with all judicial exceptions to patent eligibility (hence overruling numerous Supreme Court decisions) and statutorily recognizes a number of specific exceptions to patent eligibility. The latter generally include:

  • A mathematical formula that is not part of an invention
  • A mental process performed solely in the mind of a human being
  • An unmodified human gene, as that gene exists in the human body
  • An unmodified natural material, as that material exists in nature
  • A process that is substantially economic, financial, business, social, cultural, or artistic

At least some of the foregoing exceptions are themselves subject to further explanation or conditions in the Act.

Whether this bipartisan Act makes its way to becoming law, of course, remains to be seen.

For more information on this topic, please contact Fitch Even partner Steven G. Parmelee, author of this alert.

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