Section 101 Reform—Is It Finally Happening?

Key Takeaway:

Senator Thom Tillis recently introduced a bill to attempt to reconcile issues Section 101. While there would be quite a bit of refinement necessary to the specific language of the bill, it presents a distinct set of policy goals as a starting point.

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Earlier this summer, the USPTO delivered a report in response to a request by Sens. Thom Tillis (R), Chris Coons (D), Mazie Hirono (D), and Tom Cotton (R) regarding its findings on 35 U.S.C. § 101. This report compiled and summarized responses to a Federal Register Notice186 Fed. Reg. 36,257 (July 9, 2021); 86 Fed. Reg. 49,521 (Sept. 3, 2021)., which requested commentary from stakeholders in industry and the patent bar in relation to recent developments in U.S. patent subject matter eligibility jurisprudence. As a stakeholder in the patent bar, Mertzlufft Law submitted a comment responding to these notices, which can be viewed here.

I won’t go over the recent string of substantive subject matter eligibility decisions in Myriad, Mayo, and Alice. The Supreme Court’s recent denial of certiorari in American Axle & Manufacturing Inc. v. Neapco Holdings LLC, which declared a method of manufacturing a driveshaft amounts to nothing more than a natural law, says enough about the state of subject matter eligibility in the United States. Judge Moore put it bluntly in her dissent at the Federal Circuit, writing:

The majority’s concern with the claims at issue has nothing to do with a natural law and its preemption and everything to do with the concern that the claims are not enabled. Respectfully, there is a clear and explicit statutory section for enablement, § 112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.2Am. Axle & Mfg. v. Neapco Holdings LLC, 939 F.3d 1355, 1369 (Fed. Cir. 2019) (Moore, C.J., dissenting).

While mechanical subject matter eligibility rejections are still rare (and rightly so), these rejections are seen quite often in the software arts. Mertzlufft Law’s recent comment cited by the USPTO to the Senators explained this problem for software and artificial intelligence patent applications as such:

The rejections seen by applicants in such applications can be gratuitously difficult to overcome, and sometimes result in the need to add otherwise extraneous limitations to claims for the sole purpose of satisfying an undefined standard.3Joshua Mertzlufft, Mertzlufft Law PLLC, Response to Notice Regarding the Patent Eligibility Jurisprudence Study 3 (Oct. 15, 2021), https://www.regulations.gov/comment/PTO-P-2021-0032-0129.

Senator Tillis recently introduced a bill, titled the “Patent Eligibility Restoration Act” to attempt to reconcile Section 101 with some of these issues. The draft text of the bill is quite thin on substance, even if it would transform 35 U.S.C. § 101 into a much longer statute. In essence, the draft bill would:

  • codify the current “judicial exceptions” as its basis with slight changes to the wording of the same to narrow the application;
  • enforce consideration of claims as a whole, thus prohibiting the picking apart of claims, which can be manipulated to reduce a claim to unpatentable rubble; and
  • specifically creates a mechanism for a court’s holding of invalidity at any time during an infringement suit.

Overall, while there would be quite a bit of refinement necessary to the specific language of the bill, there is a distinct set of policy goals listed.

But, this is also not the first time Messrs. Tillis and Coons have proposed a legislative fix. So, while I’m hopeful the hamper on American innovation that is the current state of Section 101 jurisprudence is getting closer to being addressed, I will wait and see whether this legislation clears its own eligibility bar.

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