Over the past dozen years, the Supreme Court has issued several landmark decisions, with “household” names like Bilski, Alice, Mayo, and Myriad Genetics, that attempt to refine the types of inventions that can and cannot be the subject matter of a patent.  Lower courts, lawyers, and technology companies have attempted to apply the Supreme Court’s framework, built from four specific fact patterns, to the vast spectrum of potential inventions, but predictability has been understandably lacking.  So much so, that in a recent report to Congress, the USPTO penned 61 pages attempting to explain their understanding of the present meaning of the 36 words of the patent eligibility statute, 35 U.S.C. § 101.

 

Senator Thom Tillis has introduced S.4734, titled “Patent Eligibility Restoration Act of 2022,” which proposes to undo the court-made law that now affects many software, medical, and other inventions.  Senator Tillis proposes to limit a court’s ability to whittle at the edges of the statute by providing a broad grant of patent-eligible subject matter, limited only by a defined list of exclusions. Six exclusions are proposed:

 

Mathematical formulas, apart from a useful invention or discovery – formulas have long been excluded, but this exclusion has a caveat that explicitly allows formulas that are part of a useful invention and not just standing alone.

 

Unmodified human genes and unmodified natural materials – “unmodified” is further defined to allow eligibility when the gene or material is “isolated, purified, enriched, or otherwise altered by human activity,” or is “otherwise employed in a useful invention or discovery.”  This should open up a broad range of therapeutic inventions to patentability.

 

Processes that are a non-technological economic, financial, business, social, cultural, or artistic process – although seeming to codify patent exclusion for “business methods” and the like, if the process is embodied in a machine or manufacture beyond merely storing and executing the steps of the method in a computer, it is eligible.  Many software inventions would easily meet this standard and be eligible.

 

Mental processes performed solely in the human mind – this mental process exception would not apply unless presumably the smartest person in the world could perform the task without pencil and paper!

 

A process that occurs in nature wholly independent of, and prior to, any human activity – the natural process exception seems to leave room for processes that, although based in nature, include some sort of human trigger or element.

 

A separate section prohibits basing eligibility upon: anything less than a patent claim as a whole; how the invention was made; whether particular claim elements are known or naturally occurring; the state of the art; or patent allowability.  This should curb judicial efforts to look beyond the words of a claim when determining eligibility.

 

We recommend following this legislation closely, as if enacted in anything like the present form it will expand the types of inventions that may be claimed—including in your existing patent applications.  As the political will to restore patent eligibility seems to be growing, it may be time to expand the scope of inventions that companies and inventors choose to file on and describe in their applications.  To that end, one strategy to consider is filing a provisional application to hold one’s place in line while the legislative process runs its course.  It may well be that a valuable invention that is difficult or impossible to protect today will soon be eligible for protection.