Bill to Reset Analysis

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023. You can find the text of the bill (here).

The bill is a slightly refined version of the proposal floated last summer. Most of the changes seem directed to assessing the relevance of a mathematical formula as part of the claim, and making clear that otherwise patent ineligible subject matter cannot be saved by mere computer implementation. Presumably these changes are directed to addressing the concerns of those stakeholders in the predictable arts. (The lobbying force behind the effort has always been Bio/Pharma).

The bill essentially wipes the slate clean on 101 jurisprudence by eliminating all so-called “judicial exceptions.” As well it should. Despite those that would counsel otherwise, there is absolutely no rhyme or reason to the food-fight mess that is 101 jurisprudence.

The new, simplified exceptions to patentability are explained as only:

  • A mathematical formula that is not part of an otherwise eligible claimed
  • A process that is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture (this process shall not be excluded from eligibility if the process cannot practically be performed without the use of a machine or manufacture)
  • A process that is a mental process preformed solely in the human mind
  • A process occurring naturally, wholly or independent of, and prior to, any human activity
  • An unmodified natural material as such exists in nature

The bill also explains that an unmodified gene would not include a gene that is isolated, purified, enriched, or other wise altered by human activity, or otherwise employed in a useful invention or discovery. As can be appreciated the bill would be a huge win for therapeutics and diagnostic technologies.

While I think the “substantially economic” exception is inviting litigation, I don’t know that I have a better idea on trying to thread that needle. But, every computer implemented invention has a business purpose — perhaps this wiggle room is intentional.

I am optimistic that the bill will pass in some form. Given the significant uncertainty in 101 jurisprudence, there really isn’t a choice.