Draft Bill Released to Reform Section 101 of the Patent Act

Congress continues to discuss the patent eligibility requirements; on May 22, 2019, a bipartisan, bicameral bill was proposed which could redefine what kinds of inventions may be patented. If enacted, the bill will remove the judicial exceptions to patent eligibility. This draft bill arrives on the heels of the USPTO’s revised guidance on patent eligibility that went into effect on January 7, 2019, and feedback from stakeholders, inventors, and industry representatives from an earlier draft in April. 

The draft bill text released by Senators Tillis, Coons, Collins, Johnson, and Stivers proposes the following:

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.

According to the draft bill, the following additional legislative provisions are proposed:

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.

Senate Judiciary Subcommittee on Intellectual Property hearings will be held on June 4th, 5th, and 11th regarding the state of patent eligibility in the United States. Those hearings are expected to generate additional stakeholder feedback.  In addition, the Subcommittee will hear the perspective of a variety of witnesses from different industries regarding the current patent eligibility laws. Stay tuned for further updates as the hearings progress and feedback is provided. 

The draft bill text can be found here.