The Highlights
- Patent Eligibility Post-Alice: The
Supreme Court's Alice decision redefined subject
matter eligibility under 35 U.S.C. § 101 by broadening the
scope of subject matter considered "abstract" or
"natural" and incorporating inventiveness into the
eligibility question.
- Congressional Push to Clarify Section 101: The
pendingPatent Eligibility Restoration Act, which Senator Tillis
hopes to pass before his retirement, aims to clarify and narrow
Section 101 by listing specific exclusions to eligibility and
separating eligibility from other patentability criteria.
- USPTO Signals Alignment with Reform Goals: USPTO Director John Squires's recent decision in ex parte Desjardins supports patent eligibility for machine learning innovations and critiques the current jurisprudence, echoing legislative efforts to expand patent eligibility.
Before the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank International, patent eligibility under 35 U.S.C. § 101 was considered a relatively low threshold to the ability to obtain a patent. At that time, the law barred patents to software per se, but patents could be obtained on computer software and even some business methods, if the software or method was connected to a physical computing device.
Alice, however, expanded the impact of the patent eligibility requirement to bar abstract concepts without a sufficiently "inventive concept." Courts and the United States Patent and Trademark Office have applied Alice to severely curtail inventors' abilities to obtain patents protecting software inventions, bringing United States patent law out of step with the rest of the world.
Those longing for changes to current patent eligibility jurisprudence look hopefully to recent federal government actions addressing 35 U.S.C. § 101.
Congressional Efforts at Patent Eligibility Reform
In Congress, the Patent Eligibility Restoration Act appears to be moving towards passage. The Act, initially introduced in June 2023, was reintroduced by Senator Tillis in May 2025 and expands the text of Section 101 by enumerating six categories of ineligible subject matter: (1) mathematical formulas, (2) economic processes, (3) pure mental processes, (4) pure natural processes, (5) unmodified human genes, and (6) unmodified natural material.
And, the Act explicitly excludes from the patent eligibility determination any considerations from 35 U.S.C. §§ 102, 103, or 112. In other words, the Act purports to restrict patent eligibility to a gatekeeping role, while restricting substantive patent review to patentability considerations (e.g., anticipation, obviousness, written description, and enablement).
In a January 2024 Judiciary Committee hearing on the original 2023 bill, Senator Tillis summarized his view of the impact of the Alice decision on United States patent law:
As a result of a series of U.S. Supreme Court decisions which created categories of judicial exceptions, patent eligibility law has become confused, constricted, and unclear over the years. This has led to inconsistent case decisions, uncertainty in innovation and investment communities, and unpredictable business outcomes. This lack of clarity threatens to hinder innovation and to unseat the United States as the world's innovation leader, especially in new and emerging technology sectors [such] as precision medicine, artificial intelligence, quantum computing, and 5G wireless and beyond. This impacts individual inventors and businesses both large and small. Furthermore, this lack of clarity has the potential to cripple our economic growth and will leave our country vulnerable to foreign bad actors, primarily the Chinese Communist Party, who wish to undermine IP rights.
In a Judiciary Subcommittee hearing on October 8, 2025, Senator Tillis noted his intention that the Act be passed before he retires from congress in January 2027.
The USPTO's Updated Eligibility Stance
Senator Tillis's stance on patent eligibility appears to coincide with that of new USPTO director John A. Squires. On September 26, 2025, Director Squires issued a rehearing decision, in ex parte Desjardins, in which Director Squires found claims directed to improvements in training a machine learning model patent eligible based on the existing Alice two-part test for patent eligibility. In determining eligibility, the Director criticized "the confusing nature of existing § 101 jurisprudence" and advised that "§§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope."
In an October 10, 2025 written statement before the Judiciary Committee, Director Squires further defended expanding patent eligibility beyond current jurisprudence. There, he advised:
Properly read, [the Alice and Mayo decisions] do not narrow eligibility beyond the established judicial exceptions—laws of nature, natural phenomena, and abstract ideas. Yet in practice, these decisions have been wielded as bludgeons to exclude entire classes of invention, from financial technologies to artificial intelligence to diagnostics. That is not what the Court intended, and it is certainly not what Congress ever authorized.... The expansiveness of Section 101 is not a flaw; it is a feature. It is what allows our system to evolve with science and to channel creativity into the marketplace where it creates jobs, spurs investment, and strengthens the nation.
Director Squires clarified that the Desjardins decision emphasized that "Section 101 should not be misused as a blunt instrument to exclude entire technological fields" and that other patentability criteria should be used to limit the scope of patents.
Will Reverting Eligibility Improve Patents?
Pressure from Congress and the USPTO appear to favor lower barriers to patent protection, at least under Section 101. Both Senator Tillis's and Director Squires's efforts seek to return patent eligibility to its pre-Alice gatekeeping role. And, Senator Tillis has expressed his desire that patent eligibility under Section 101 align closer to the patent laws of other countries. Whether these changes lead to improved predictability and reduced confusion during patent litigation, however, remains to be seen.
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