Sens. Thom Tillis and Chris Coons recently introduced a bill that could alter patent eligibility law. The Patent Eligibility Restoration Action of 2023, introduced by Sens. Tills, R-N.C., and Coons, D-D. has the potential to rescind a decade of precedent allowing the invalidation of patents directed to abstract ideas or natural phenomena and replace it with more defined criteria of what can and cannot be patented.
Finnegan partner Chris Johns told Law360 that the more defined criteria from the bill include some "squishy language" about exceptions for eligibility that will need to be ironed out.
“The stress of figuring out what the new terms mean is worth the addition of guardrails to Section 101 of the Patent Act. It's 'Whose Line Is It Anyway?' The points don't matter, and there's not a lot of rhyme or reason to it," he said of the current law, whereas the new bill would "at least bring some rhyme or reason. [It would be:] Here's this box. We don't exactly agree where the lines are. It's a little blurry. But you usually have some idea if you're in the box or not."
A similar version of the bill was introduced by Tillis in 2022, but that version didn’t include the disputed terms and instead had language that made attorneys fear "you'd never get a patent related to software again," Chris said. [The new version] "is likely to be more patent-friendly for patentees in the software and business methods space."
Even the vaguer terms in the new bill have a chance of being more predictable than what courts are currently using, Chris said, noting that there is already case law on patent eligibility when inventions are performed on a machine, which could help develop an understanding.
The office uses guidance provided in 2019 by then-director Andrei Iancu — with some updates — to ensure examiners have a similar framework when deciding whether a patent application should be granted. The senators are "in essence codifying" what the agency is already doing, Chris said.
“Read Eligibility Bill Gives Attys Relief, Even With 'Squishy' Terms”
