In April, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) proposed a draft framework for legislation reformulating the standards for determining patent eligibility under § 101 of the Patent Act. The framework largely codified the Patent Office's latest internal eligibility standards, which took effect in January 2019, formulating a closed list of categories excluded from patent eligibility and creating a "practical exception" test to ensure that such categories are construed narrowly.
On May 22, Senators Coons and Tillis were joined by Representatives Doug Collins (R-GA), Hank Johnson (D-GA) and Steve Stivers (R-OH) in proposing a bicameral draft bill containing — among other things — new text for § 101 and new supporting definitions in § 100. Summarized below are some of the draft language's key points:
- New definition of patent eligibility: Section 101, subsection (a), makes the cornerstone of eligibility that the invention or discovery be "useful." The definitions of § 100 are augmented by a new subsection (k), which defines "useful" to mean that the invention or discovery "provides specific and practical utility in any field of technology through human intervention." This introduces new terminology whose meaning would have to be determined through judicial interpretation, such as what it means for the utility of an invention or discovery to be "specific" and "practical"; what constitutes a field of "technology"; and what it means for the utility to be obtained "through human intervention." The focus on the "specific" would seem to address the long-standing judicial concern about avoiding preemption of a broad swath of technology, and the requirement of "human intervention" would serve to prevent patenting of purely natural laws.
- Requirement of holistic analysis: Section 101, subsection (b), states that eligibility "shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation." This codifies, for example, the requirement of Diamond v. Diehr that "claims must be considered as a whole."
- Statutory abrogation: Many recent legal decisions have argued that Congress's silence regarding prior judicially-created exceptions to eligibility in subsequent Patent Acts constituted a tacit incorporation of those judicial exceptions into the acts. The draft bill squarely addresses this line of reasoning in the "Additional Legislative Provisions" section by expressly abrogating cases establishing or interpreting judicial exceptions.
- Exclusion of other statutory sections: Many past decisions invalidating patents for lack of eligibility have been asserted to implicitly import the considerations of the prior art inquiry of §§ 102 and 103, or of the definiteness inquiry of § 112, into § 101. Accordingly, the "Additional Legislative Provisions" section of the draft bill directly states that eligibility "shall be determined without... any other considerations relating to sections 102, 103, or 112." Similarly, the requirement of prior Patent Acts that the invention or discovery be "new" as well as "useful" has been removed from § 101, presumably to avoid encouraging the importation of prior art considerations into § 101.
- Default position on eligibility: Finally, perhaps to address a concern that courts will seek to interpret the new statutory language to salvage many of the existing judicial exceptions, the "Additional Legislative Provisions" section further explicitly states that the "provisions of section 101 shall be construed in favor of eligibility."
In sum, the draft bill would be expected to significantly reduce challenges to patents under § 101, leaving patent law to focus on the definiteness, enablement and written description requirements of § 112 and the prior art requirements of §§ 102 and 103. It should be noted, however, that the draft bill is still very much open to discussion and its text could change significantly. Indeed, the hearings of the Subcommittee on Intellectual Property held in early June expressed a great variety of viewpoints (e.g., those of technology companies, biotechnology companies and digital rights proponents). As of our publication date in mid-August a promised follow-up version of the proposed bill still has not emerged.
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