TAKEAWAY: Proposed legislation seeks to clarify U.S. patent eligibility requirements.

In June 2023, Senator Chris Coons (D-DE) and Senator Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2023 to reform the U.S. patent eligibility requirements of 35 U.S.C. § 101. Former U.S. Patent and Trademark Office (USPTO) Directors David Kappos and Andrei Iancu have called the bill “much needed legislation to foster the development of next-generation technologies.” Many practitioners and innovators alike have been frustrated by the current state of patent eligibility law in the U.S., arguing that patenting key areas of technology, such as computing software and medical diagnostics, exceptionally difficult. The bill states, “For many years after the original enactment of section 101 of title 35, United States Code, the Supreme Court of the United States and other courts created judicial exceptions to the wording of that section, thereby rendering an increasing number of inventions ineligible for patent protection. Efforts by judges of district courts and courts of appeals of the United States to apply the exceptions described in paragraph (2) to specific circumstances have led to extensive confusion and a lack of consistency.”

The bill proposes to amend section 101 in order to enumerate statutory exceptions to patent eligibility, summarized in the bill as follows:

(D) The following inventions shall not be eligible for patent protection:

(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.

The bill notes that a process that requires the use of a machine to be performed, such as a process that requires the use of a computer to be performed, would be patent eligible. These statutory exceptions would eliminate judicial exceptions to patent eligibility according to case law of the U.S. Supreme Court and the Federal Circuit

While it may take some time for Congress to consider the proposed legislation, applicants and practitioners may see hope for clarification in the confusing landscape of patent eligibility.