U.S. Senate bill would reform patent-eligibility standards

Senator Thom Tillis (R-NC) walks after a vote at the Capitol Hill in Washington, U.S., May 25, 2022. REUTERS/Joshua Roberts

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  • Sen. Thom Tillis’s bill addresses what can be patented
  • Critics say current law creates uncertainty, limits innovation

(Reuters) – U.S. Republican Senator Thom Tillis of North Carolina said Wednesday that he has introduced a bill to address the divisive issue of what can be patented.

Tillis’ Patent Eligibility Restoration Act comes just over a month after the U.S. Supreme Court declined to take up the question of patent eligibility despite the urgings of the Trump and Biden administrations, patent-focused appeals court judges and others.

“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,” Tillis said in a statement.

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The high court last addressed the issue in a 2014 ruling that helped establish a two-part eligibility test under the Patent Act. The test requires courts to determine if an invention involves an unpatentable abstract idea, natural phenomenon or law of nature, and if so, whether it includes an inventive concept that would make it patentable.

Critics say the current law has produced unpredictable decisions and undermined the U.S. patent process. Tillis, the ranking Republican member of the Senate Judiciary’s intellectual-property subcommittee, said during a hearing last year that patent-eligibility law was “a shambles.”

Tillis said that his bill “addresses concerns regarding inappropriate eligibility constraints by enumerating a specific but extensive list of excluded subject matter.”

The bill would specify that mathematical formulas; non-technological, mental, and natural processes; and unmodified human genes and natural materials cannot be patented. It would also require courts to determine patent eligibility by “considering the claimed invention as a whole.”

The bill would also allow for patents covering processes “embodied in a machine or manufacture” — addressing the issue the Supreme Court recently declined to decide — and human genes or natural materials that are “isolated, purified, enriched, or otherwise altered by human activity.”

Andrei Iancu, director of the U.S. Patent and Trademark Office under the Trump administration and now a partner at law firm Irell & Manella, called the bill “an important milestone in the effort to modernize our patent laws, and to clear up the confusion caused by recent jurisprudence as to what is patentable.”

Tillis and Democratic Senator Patrick Leahy of Vermont, the head of the IP subcommittee, separately introduced a bill Tuesday to improve the quality of patents issued by the PTO.

That bill would require the director of the PTO to develop guidance to improve the examination process and outline plans to train examiners on emerging technology and modernize the office’s IT systems, among other measures.

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Blake Brittain

Thomson Reuters

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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