Section 101 May Be Changing: Will Your Invention Be Patent Eligible?

Stephen Kobza | 08.31.22

The courts have imposed uncertainty into the question of what is patent eligible. Now, Congress is weighing-in with the goal of providing clarity. Could you soon be certain that your invention is patent eligible?

At present, 35 U.S.C. § 101 (Section 101) reads as follows¹:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

However, after more than two centuries and a recent history of potentially controversial, if not at least inquisitive, Supreme Court decisions (Mayo Collaborative Services, Inc. v. Prometheus Laboratories, Inc, 2012; Alice Corp. v. CLS Bank International, 2014), this historically inconsequential provision has been infused with meaning which arguably goes beyond the text. Highlighting the frustration both practitioners and the industries they serve have had with recent judicial interpretations of Section 101, Sen. Thom Tillis (R‑NC) observed that patent eligibility law in the United States is unclear. In an effort to clarify the scope of patent eligibility in the United States, Section 101 appears to be close to a substantive makeover. Senator Tillis has recently introduced the Patent Eligibility Restoration Act (Bill) on Tuesday, August 2, 2022. The text of the Bill is provided here.

The principle proposed change to Section 101 in the Bill is the identification of exclusions to patent eligibility. Further, the Bill provides the patent eligibility provisions of Section 101 are mitigated only by such exclusions. Specifically, proposed Section 101(b)(1) lists four exclusions to patent eligibility as:

• A mathematical formula, apart from a useful invention or discovery.
• A process that — 
  • is a non-technological economic, financial, business, social, cultural, or artistic process;
  • is a mental process performed solely in the human mind; or
  • occurs in nature wholly independent of, and prior to, any human activity.
• An unmodified human gene, as that gene exists in the human body.
• An unmodified natural material, as that material exists in nature.

Patent Eligibility Restoration Act, S. 4734, 117th Cong. (2022). Thus, proposed Section 101 seeks to minimize questions of law regarding patent eligibility by highlighting specific discoveries and inventions as not patent eligible. However, the wording of the exclusions may result in factual questions for a trier of fact as to whether one’s invention fits under the orb of a stated exclusion. These questions of fact may be minimized for certain inventions with the proposed ​“CONDITIONS” subsection, provided in proposed Section 101(b)(2) of the Bill. The ​“CONDITIONS” subsection states exceptions to the proposed exclusions to patent eligibility for ​“CERTAIN PROCESS” and ​“HUMAN GENES AND NATURAL MATERIALS”.

Providing yet another avenue to reduce any ambiguity in Section 101, the Bill includes an ​“ELIGIBILITY” subsection, provided in proposed Section 101(c)(1) of the Bill. The proposed subsection seeks to codify what is presently understood, that being, “… eligibility shall be determined … by considering the claimed invention as a whole and without discounting or disregarding any claim element….” Patent Eligibility Restoration Act, S. 4734, 117th Cong. (2022).

With that, the proposed amendments to Section 101 under the Bill if codified will potentially reduce arguable ambiguity in Section 101. Are all such concerns related to Section 101 alleviated with the Bill? No. To date the Bill introduces terms that are yet to be defined whether by amendment to the Bill or by the courts where the Bill is codified. The Bill’s journey to becoming law has been long, but the journey is far from over.

¹Cited Reference: Reviewing the Patent Eligibility Restoration Act of 2022

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