It was revealed today, August 3 (US timezone), that Senator Thom Tillis has introduced legislation to update US subject matter eligibility regulations.
If passed, the Patent Eligibility Restoration Act, which was proposed last night, will restrict the exceptions to patent eligibility specified in Section 101 of Title 35 of the US Code.
The measure is the first significant effort by lawmakers to clarify Section 101, which has grown more complex since the Supreme Court (SCOTUS) handed down its decisions in the 2010s in Mayo, Myriad, and Alice.
The announcement follows the Supreme Court of the United States' rejection of an appeal in the case of American Axle v. Neapco, which dashed hopes for a judicial resolution to the ambiguous legal framework around Section 101.
With the exception of the exclusions listed in the bill, Tillis's new legislation will make it clear that anyone who develops a useful process, machine, manufacturing, composition of matter, or improvement may be granted a patent.
There are several exceptions, such as mathematical formulas, mental processes carried out only in human minds, natural processes that take place wholly unrelated to and before any human action, and unaltered genes as they are found in the human body.
Patents for non-technological economic, financial, business, social, cultural, or creative processes are typically not available to applicants.
The act will make it clear that applicants can get patents on methods even if they are implemented in machines if it is approved by the US legislature.
However, such patents would not be acceptable if the machine was mentioned in a patent claim without including integrating the steps of the process that the machine carried out, rather than just merely storing and executing them.
The proposed legislation further stipulated that the claimed invention as a whole shall be considered for determining patent eligibility, without any claim portions being skipped over or ignored.
Additionally, it stipulated that only Section 101 should be used to assess eligibility.
According to the proposed legislation, examiners would not be permitted to take into account the state of the art at the time of inventions, the process by which claimed inventions were made, or whether claim elements were known, conventional, routine, or naturally occurring when determining eligibility.
Additionally, they would not be permitted to evaluate the novelty, non-obviousness, or enablement of the subject matter.
In addition, the senator's legislation would clarify that "process" included the use, application, or method of manufacture of a known or naturally occurring process, machine, manufacture, composition of matter, or material. This would amend Section 100.
It would define "useful" as an innovation or discovery that, in the eyes of a person of ordinary skill in the art, has a particular and practical utility.
The issues with Section 101 have previously been the subject of many attempts by Tillis and other senators.
Senators Mazie Hirono, Tom Cotton, and Christopher Coons, along with Tillis, wrote to the USPTO in March 2021 to ask for information on the status of patent eligibility in the US. In June, the office made its report public.
Along with Coons, representatives Doug Collins, Hank Johnson, and Steve Stivers, Tillis also put forth a draught bill in 2019 to amend Section 101, just before leading three days of hearings with the Senate Judiciary Subcommittee on Intellectual Property.
The likelihood that this law will be passed cannot be confirmed with surety.