Patent Eligibility Reform in Congress: Updates on the Coons/Tillis Proposal

In April, Senators Coons and Tillis proposed a draft framework for legislation reformulating the standards for determining patent eligibility under § 101 of the Patent Act. The framework largely codified the Patent Office’s latest internal eligibility standards that went into place in January 2019, formulating a closed list of categories excluded from patent eligibility and creating a “practical exception” test to ensure that such categories are construed narrowly.

On May 22, Senators Coons and Tillis were joined by Representatives Collins, Johnson and Stivers in proposing a bicameral draft bill containing—among other things—new text for § 101, as well as new supporting definitions in § 100.

It should be noted that the draft bill is still very much open to discussion, with hearings of the Senate Judiciary Subcommittee on Intellectual Property to be held on June 4, 5 and 11. That said, I’ve summarized some of the draft language’s key points below:

  • New definition of patent eligibility: Section 101, subsection (a), makes the cornerstone of eligibility that the invention or discovery be “useful.” The definitions of § 100 are additionally augmented by a new subsection (k), which defines “useful” to mean that the invention or discovery “provides specific and practical utility in any field of technology through human intervention.” This introduces new terminology whose meaning would have to be determined through judicial interpretation, such as what it means for the utility of an invention or discovery to be “specific” and “practical;” what constitutes a field of “technology;” and what it means for the utility to be obtained “through human intervention.” The focus on the “specific” would seem to address the long-standing judicial concern about avoiding preemption of a broad swath of technology, and the requirement of “human intervention” would serve to prevent patenting of purely natural laws. What constitutes a “field of technology” might be somewhat more problematic. For example, would a business or financial method be considered to be in a field of “technology”? If not, would its implementation through conventional technological means, such as standard computers, remedy the shortcoming? Would the European Patent Office’s own “technical solution to a technical problem” approach prove instructive?
  • Requirement of holistic analysis: Section 101, subsection (b), states that eligibility “shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.” This codifies, for example, the requirement of Diamond v. Diehr that “claims must be considered as a whole.”
  • Statutory abrogation: Many recent legal decisions have argued that Congress’ silence regarding prior judicially-created exceptions to eligibility in subsequent Patent Acts constituted a tacit incorporation of those judicial exceptions into the acts. The draft bill squarely addresses this line of reasoning in the “Additional Legislative Provisions” section by expressly stating that “No implicit or other judicially created exceptions to subject matter eligibility, including ‘abstract ideas,’ ‘laws of nature,’ or ‘natural phenomena,’ shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.”
  • Exclusion of other statutory sections: Many past decisions invalidating patents for lack of eligibility have been asserted to implicitly import the considerations of the prior art inquiry of §§ 102 and 103, or of the definiteness inquiry of § 112, into § 101. The “Additional Legislative Provisions” section of the draft bill states that the “eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.” Similarly, the requirement of prior Patent Acts that the invention or discovery be “new” as well as “useful” has been removed from § 101, presumably to avoid encouraging the importation of prior art considerations into § 101.
  • Default position on eligibility: Finally, perhaps to address a concern that courts will seek to interpret the new statutory language to salvage many of the existing judicial exceptions, the “Additional Legislative Provisions” section further explicitly states that the “provisions of section 101 shall be construed in favor of eligibility.”

Following the enactment of the Patent Office’s “2019 Revised Patent Subject Matter Eligibility Guidance,” the sole categorical exceptions to patent eligibility recognized by the Patent Office—if not the courts—are “mathematical concepts,” “certain methods of organizing human activity,” and “mental processes” that are “performed in the human mind.”

The draft bill would be expected to significantly reduce challenges to patents under § 101, leaving patent law to focus on the definiteness, enablement, and written description requirements of 112 and the prior art requirements of §§ 102 and 103. Again, however, the draft bill is still very much open to discussion, and its text could change significantly following the hearings in early June. The text of the testimony from the June 4 hearing will be available here.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.