Congressional Leaders Release a Bipartisan, Bicameral Draft Bill on Patent Eligible Subject Matter, Section 101 of the Patent Act.

U.S. Congressional leaders Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, Representative Doug Collins (R-GA), Ranking Member of the House Judiciary Committee, Representative Hank Johnson (D-GA), Chairman of the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet, and Representative Steve Stivers (R-OH) have released a draft bill to amend the Patent Act in connection with patent eligible subject matter (Section 101 in 35 U.S.C. section 101). Full copy of draft bill available here.

Rep. Johnson, in a press release by Sen. Tillis’s states: “Section 101 of the Patent Act is foundational to the patent system, but recent court cases have upset what should be solid ground. That’s why I’ve been pleased to work with my colleagues—Senators Tillis and Coons; Representatives Collins and Stivers — on this effort to restore predictability and stability to the patent eligible subject matter inquiry that will ensure that the patent system is available to incentivize innovation in key areas of our economy. Press Release pdf is available here.

Decisions from the Court of Appeals for the Federal Circuit have suggested Congressional action on the Section 101, patent subject eligibility. Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354 (Fed. Cir. 2018)(J. Lourie and Newman, concurring opinion “The law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems. … The Supreme Court put a gloss on this provision by excluding laws of nature, natural phenomena, and abstract ideas”).

As patent subject matter eligibility relates to secure patent protection for computer programs, the U.S. Supreme Court case of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (“Alice Corp”), has rendered an extremely large percentage of previously issued U.S. computer patents invalid under Section 101 of the Patent Act as being ineligible patent subject matter. A like number of patent applications have also been rejected by the USPTO. In Alice Corp, the Court held that a “abstract idea[s], just like the algorithms” are patent ineligible subject matter. Any “algorithm implemented on a general-purpose digital computer” was found to be patent ineligible subject matter.

It is widely believed by nearly all patent practitioners that one cannot define what an “algorithm” is or what an “abstract idea” is with any reasonable degree of clarity, at least when it comes to computer programs.

Currently, the primary exception to the Alice Corp ineligible subject matter rule, per the Supreme Court, are: (a) “an ordered combination which transform[s] the nature of the claim into a patent-eligible application”; (b) an “improve[ment] [to] the functioning of the computer itself”; or ( c) to “effect an improvement in any other technology or technical field,” that is, an improvement in a non-computer-related field. For example, a computer program assisting a jet pilot to track an object with the pilot’s heads-up display was deemed patent eligible subject matter by the Court of Appeals for the Federal Circuit. Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017). The physical interrelationship of the computer program with the heads-up display was the improvement to the non-computer-related technical field.

A summary of the draft Section 101 revisions follow. To Section 100: “(k) The term ‘useful’ means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” This is a new provision to be added to Section 100 and seeks to expand patentable subject matter to “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” Therefore, if the claimed invention was created by human intervention, and has utility, “any field of technology” is subject to a patent.

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.” The Draft Bill does not change Section 101(a). New Section 101(b) requires that all words in the claim be considered, and not “discounted” in determining patent eligible subject matter.

The Draft Bill has other suggested changes to Section 112(f) that do not directly address the Aloc Corp. – patent eligible subject matter issue.

The Draft Bill seems to suggest the following additional commentary: “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.”

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