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IP Strategy

Proposed Section 101 Language Could Impact Patent Eligibility

By June 10, 2019April 2nd, 2021No Comments

Perhaps the most fundamental question in the patenting process is whether the subject matter is patentable, a key statutory requirement for patent approval. 35 U.S.C. § 101-Inventions Patentable of the US Patent Act provides guidelines for the patent eligibility of an invention. The statute directs: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”. However, a number of Supreme Court cases resulting in the Alice/Mayo patentable subject matter framework have created additional judicial exceptions to patentable subject matter.

A current bi-partisan effort seeks to change some of the language within this statute because it might be too limiting in practice, in view of recent court decisions. One of the phrases under consideration is, “process, machine, manufacture, or composition of matter”. Historically, courts have rejected patentability for any inventions that they view as originating outside of these four categories. This includes “laws of nature, natural phenomena, and abstract ideas”.

However, as science and technology have advanced beyond the imaginations of the original statute writers, the realm of what is possible and potentially patentable has expanded. Researchers in computer science, biotechnology, biochemistry, medical diagnostics, and more are making discoveries that could result in monetization — but face legal uncertainty. Without clear patentability guidelines, the potential for finding investors and raising capital may be impeded.

Lawmakers are working to revitalize the inventive community in the US by creating a greater pool of patentable subject matter. They are attempting to strike a balance between patentable subject matter and patent quality. Some feel that the requirements for novelty, written description, enablement, and non-obviousness best address the issues presently arising under patentable subject matter. Proponents to the changes suggest that clarifying patentable subject matter can prompt an increase in the number of high quality patents filed, particularly in the subject areas most impacted by recent Supreme Court decisions. In turn, this can lead to an increase in investment opportunities and greater certainty. The carrots of investment opportunities incentivize innovation. This helps our economy and secures our place as global leaders in discovery.

On the drawing board and currently under review is a revision of Section 101. The movement for reform would statutory abrogate the Alice/Mayo framework for determining patentability.

Senator Tom Tillis (R-NC) presented the following draft for Section 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

His draft bill language would open the door much wider when patent eligibility is under consideration. Keeping our patent statutes on pace with technological advancements and economic challenges is a topic worthy of discussion and debate. Is this the first critical step to additional patent reforms?

re scheduled for June 4th, 5th, and 11th 2019. We won’t know for a while whether the idea for this statutory abrogation becomes law. We don’t know exactly what the impacts will be. Regardless of your position, this is decision to watch. And, perhaps, this is the most substantial bi-partisan patent legislation to emerge since the America Invents Act (AIA).

To help ensure patentability for your ideas, visit Try our extensive Prior Art Database. See the possibilities for semantics-based intellectual property searches with InnovationQ. Please contact us with any questions you have.

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