'; Leonard Hua Discusses Proposed Patent Eligibility Restoration Act of 2023

Leonard Hua Discusses Proposed Patent Eligibility Restoration Act of 2023

September 5, 2023

By Leonard Z. Hua

Since the Supreme Court developed the modern two-step patent eligibility test in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), courts have utilized this framework to determine whether a patent covers ineligible subject matter.  However, confusion and concern about the framework have persisted, at least partially due to the lack of clear and consistent guidance from the Federal Circuit as to what constitutes an “abstract idea” and how to apply the “inventive concept” analysis.

These problems have been particularly pronounced in the context of computing technologies, such as with respect to patents involving communication networks, data processing, and/or software.  Some patented inventions that seemed quite concrete and technical in nature were nonetheless invalidated for being directed to an “abstract idea” under the Alice framework.  See, e.g., In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 613-14 (Fed. Cir. 2016).

On June 22, 2023, Senators Thom Tillis and Chris Coons proposed the Patent Eligibility Restoration Act of 2023 with the goal of clarifying and remediating patent eligibility under 35 U.S.C. § 101.  As part of this proposed legislation, the currently-applied judicial exceptions to 35 U.S.C. § 101 would be replaced with statutory exclusions.

Notably, with respect to the field of computing technologies, the statutory exclusions would only exclude a mathematical formula if it is not part of a claimed invention that falls within the existing statutory categories (“any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof”), and the revised statue would also allow for patenting of processes that are “substantially economic, financial, business, social, cultural, or artistic” if they “cannot practically be performed without the use of a machine or manufacture.”

Further, the proposed legislation would also remove the “inventive concept” analysis, as the determination of whether a claimed invention is eligible for a patent is required to be made “without regard to… (ii) whether a claim element is known, conventional, routine, or naturally occurring; (iii) the state of the applicable art, as of the date on which the claimed invention is invented; or (iv) any other consideration in section 102, 103, or 112.”

These are significant departures from the current state of eligibility caselaw under 35 U.S.C. § 101, and it is a sign that lawmakers believe that the pendulum has swung too far against patent eligibility over the past decade.  Of course, it remains yet to be seen whether this legislation will actually be adopted, and if so, how it will be applied.

The full text of the proposed legislation is accessible at:

Leonard Z. Hua