August 4, 2022

Patent Eligibility Roundup: New Legislation, Call for Comments, Delaying Eligibility

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

We have a few brief Section 101 updates starting, unsurprisingly, with …

Sen. Tillis Released His Section 101 Bill

Roughly one month after the U.S. Supreme Court rejected the American Axle petition, Sen. Thom Tillis (R-NC) has released the first draft of his Patent Eligibility Restoration Act of 2022. His press release states, in part:

I have long said that clear, strong, and predictable patent rights are imperative to enable investments in the broad array of innovative technologies that are critical to the economic and global competitiveness of the United States, and to its national security. Unfortunately, our current Supreme Court's patent eligibility jurisprudence is undermining American innovation and allowing foreign adversaries like China to overtake us in key technology innovations.

As expected, many of the judicial exceptions we know today would be codified under the proposed legislation:

Regarding exclusions, a patent may not be obtained for the following claimed subject matter:

(1) a mathematical formula, apart from a useful invention or discovery;

(2) a process that

(2a) is a non-technological economic, financial, business, social, cultural or artistic process – though a claimed invention that is a process, per (2a), embodied in a machine or manufacture shall be eligible unless the machine or manufacture is recited without integrating, beyond merely storing and executing, the process steps that are to be performed by the machine or manufacture thereon;

(2b) is a mental process performed solely in the human mind; or

(2c) occurs in nature wholly independent of and prior to any human activity;

(3) an unmodified human gene as it exists in the human body;

(4) an unmodified natural material as it exists in nature

The draft legislation attempts to move parties and courts away from the Mayo/Alice two-step analysis, but much of that familiar analysis is recognizable at least in exception 2. For example, deciding whether the claimed process is "non-technological" will certainly have similarities to Alice/Mayo step 1 (minus the "directed to" language). Determining whether a claimed process is using a machine or manufacture merely to execute or store the non-technological process steps feels a bit like step 2 – is the machine doing normal machine things, or is there something more?

Sen. Tillis notes that patent eligibility should be determined by this section alone, without regard to: "the manner in which the claimed invention was made; whether a claim element is known, conventional, routine, or naturally occurring; the state of the art at the time of invention; or any other consideration of sections 102, 103, and 112 of this title."

Legislation like this will take time. There are many high-powered parties that have a stake here, and they'll surely make their voices heard. But as drafted, there is still a lot of litigation to be had. What is a non-technological process? And when is a machine merely executing or storing the process steps? Stay tuned to find out!

Call for Comments Regarding Subject Matter Eligibility from Director Vidal

In late July, Kathi Vidal – the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) – continued the USPTO's discussion of the state of the law on patent eligibility. Vidal's blog post was a follow-on to the USPTO's in-depth June 2022 report titled "Patent eligible subject matter: Public views on the current jurisprudence in the United States." The report was in response to a well-publicized March 2021 letter from Sens. Tillis, Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE). Of interest, the blog post provided some early statistics behind the recently closed Deferred Subject Matter Eligibility Response pilot program, which was designed to evaluate whether examination efficiency and patent quality can be improved by delaying the complete evaluation of subject matter eligibility until other patentability criteria are evaluated. After a summary of the USPTO's work to date, the post recognized that "[d]espite this progress to achieve a more consistent examination under Section 101, there is more work to be done" and made an explicit request for comments on the guidance currently found in Section 2106 of the Manual of Patent Examining Procedure – the roadmap for patent examiners and practitioners.

Comments are requested by Sept. 15, 2022, and can be sent to the aptly named email address

Delaying Eligibility Determinations at the USPTO

The USPTO launched a Deferred Subject Matter Eligibility Response program earlier this year. Ryan Davis from Law360 dug into the pilot program and talked to attorneys (including Holland & Knight's own Heath Sargeant) to hear how the program is working for their clients. The entire article is worth a read.

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