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IP Alert: Legislators Publish Plan for Bill to Clarify Patentable Subject Matter Eligibility Under 35 U.S.C. § 101

May 28, 2019

On May 22, a bipartisan group of Congressional lawmakers released a one-page plan to rewrite section 101 of the Patent Act. This plan is not final and is purportedly designed to generate feedback before drafting a final bill. Though quite brief, this plan seems clearly aimed at legislatively overruling the Supreme Court’s judicial exceptions to patent eligibility.

Since the 2012 and 2014 landmark Supreme Court decisions Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. Pty. Ltd. v. CLS Bank Int’l were released, inventors, business owners, patent practitioners, courts, and USPTO examiners alike have struggled with how to apply the Supreme Court’s framework in Mayo/Alice for evaluating whether an invention is eligible subject matter for patenting under 35 U.S.C. § 101. Perhaps at the core of the confusion is that while the Supreme Court found fault with previous tests for patent eligibility, the Court failed to provide a clear objective test that would legally suffice instead. Further confusion seems to have arisen from the Court’s judicial musings bringing prior art elements into the mix, notwithstanding that two other tests of patentability are already explicitly based upon a comparison of the invention to the prior art. Many patents have been invalidated and many patent applications have failed to mature into issued patents as the apparent result of this situation.

The full draft of the proposed changes reads as follows:

Section 100:

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

Section 101:

(a) 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.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 112:

(f) Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Additional Legislative Provisions:

       •   The provisions of section 101 shall be construed in favor of eligibility.  
       •   No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.
       •   The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.

The Senate Judiciary Subcommittee on Intellectual Property will be holding hearings on June 4, 5, and 11 “to solicit additional stakeholder feedback and to hear from a diverse set of witnesses on the problems different industries are facing with our nation’s patent eligibility laws.” Feedback on the proposal can be emailed to IntellectualProperty@tillis.senate.gov.  

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


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