United States Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023 (the "Act") on June 22, 2023. The Act seeks to modify and clarify "patent eligibility jurisprudence interpreting section 101 of title 35, United States Code" and suggests that judicial exceptions created by courts "render[] an increasing number of inventions ineligible for patent protection" and that judicial efforts to apply the current law in "specific circumstances have led to extensive confusion and a lack of consistency."1 The Act further suggests that it would eliminate "[a]ll judicial exceptions to patent eligibly."2
Below, we have identified several provisions of the proposed legislation and issues that stakeholders in the patent system may want to consider regarding those proposals:
1. Aspects of Section 101 patentability in the Act
The Supreme Court has held that the Patent Act "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."3
The Act seeks to eliminate these "judicial exceptions" to the Patent Act and instead would create a statutory framework that defines which inventions are and are not patentable. The Act states that "a person may not obtain a patent for" several categories of inventions: a mathematical formula; a process that is substantially economic, financial, business, social, cultural, or artistic; a mental process; a process that occurs in nature; an unmodified human gene; and an unmodified natural material.4
The Act would enable a court to "determine whether an invention or discovery . . . is eligible for a patent under this section, including on motion of a party when there are no genuine issues of material fact."5 This provision would allow a court to evaluate whether a particular invention fits within the categories for which patents may not be obtained.
2. The scope of the ineligibility for "a process that is substantially economic, financial, business, social, cultural, or artistic" in the Act
The Act would deem ineligible "a process that is substantially economic, financial, business, social, cultural, or artistic."6 The Act states that a "process" "shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture."7 This may lead to two questions.
First, what is a process that is substantially artistic? Cultural? Social? Second, when can a process not "practically" be performed without the use of a machine or manufacture? Does this mean that an invention is eligible if it implements a machine or manufacture and is thus faster than if a person performs the process?
3. What are the implications of the Act to patent portfolios and applications?
Stakeholders should consider what effect the Act would have on issued patents and pending applications. While the strategies will likely vary based on technology and particular issues, the legislation provides another consideration in an increasingly complicated area of patent eligibility. Monitoring portfolios and keeping application families pending may assist in developing strategies poised to fit within a new statute on patent eligibility.
4. How does the Act affect patents related to artificial intelligence?
Stakeholders should also consider how the Act relates to
artificial intelligence. Recently, in Thaler v. Vidal, the
Federal Circuit held that "the Patent Act requires that
inventors must be natural persons; that is, human
beings."8 The court relied on inter alia,
the fact that "the Patent Act has defined an
'inventor' as 'the individual . . . who
invented or discovered the subject matter of the
invention.'"9
The interaction between artificial intelligence and the Act's
purpose may be the subject of further analysis. Indeed, the
co-chairs for the Council for Innovation Promotion have been quoted
as describing the Act as "much needed legislation to foster
the development of next-generation technologies across many
innovative industries, including artificial
intelligence."10 It remains to be seen what effect
the Act may have on innovations related to artificial intelligence,
and stakeholders should consider the provisions of the Act in
conjunction with ongoing and future patent applications.
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If enacted, the Act would change the way in which patent eligibility is considered by courts, the Patent and Trademark Office, and innovators. We will be continuing to provide analysis of the Act and its effects as developments arise. We intend to host a webinar on the Act in the upcoming months.
Footnotes
1. Act at 1–2.
2. Id. at 3.
3. Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 216 (2014).
4. Act at 5–7.
5. Id. at 8.
6. Id. at 6.
7. Id.
8. 43 F.4th 1207, 1210 (Fed. Cir. 2022), cert. denied, No. 22-919, 2023 WL 3046164 (U.S. Apr. 24, 2023).
9. Id. at 1211 (quoting 35 U.S.C. § 100(f)).
10. See Press Release, Senators Coons, Tillis introduce Patent Eligibility Restoration Act to revitalize American innovation (June 22, 2023).
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