Congress Unveils Draft Patent Eligibility Legislation

A Bipartisan Group of Lawmakers Recently Introduced Draft Patent Eligibility Legislation

On May 22, 2019, a bipartisan group of lawmakers introduced draft patent eligibility legislation. Among other changes, the bill would remove the judicial exceptions to patent eligibility.

Patent eligibility reform is a hot topic.  The U.S. Patent and Trademark Office (USPTO) issued revised guidance in January. Now, Congress is also attempting to return predictability to patent eligibility.

Draft Patent Reform Bill Subject to Stakeholder Feedback

The bicameral bill was introduced by U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representative Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee, Hank Johnson (D-GA-4), Chairman of the House Judiciary Subcommittee on Intellectual Property and the Courts, and Steve Stivers (R-OH-15).

It contains more details than the framework Sens. Tillis and Coons released in April. However, the sponsors made it clear that the language contained in the draft bill text is not final and is subject to additional revision.

In the July 10, 2019 Federal Circuit Court decision of Athena Diagnostics v. Mayo, Judge Moore suggested in her opinion that there is no more that the Federal Circuit can do to provide clarity of patent eligibility and that “your only hope lies with the Supreme Court or Congress”.  Senator Tillis and Congress have commented that this decision shows that legislative action is both urgent and critical.

Proposed Patent Eligibility Reforms

Section 101 of the Patent Act provides that “whoever invents or discovers any new and useful process, machine, manufacture or composition of matter of any new and useful improvement thereof, may obtain a patent, therefore, subject to the conditions and requirements of this title”.

Below are several other proposed legislative provisions:

• 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.

The patent eligibility landscape is poised to change dramatically. However, the extent of the changes and the timeline for implementation are still very uncertain. We encourage entities and individuals that may be impacted by patent reform to check back for updates and contact a member of the Scarinci Hollenbeck Intellectual Property Group with any questions.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.