Recent Proposal for Section 101 Reform

By John Isacson

A bipartisan group of Senators and Representatives recently released a framework for amending Section 101.  The group includes Senator Chris Coons (D-Del.) and Senator Thom Tillis (R-N.C.), as well as Representative Doug Collins (R-Ga.), Representative Hank Johnson (D-Ga.) and Representative Steve Stivers (R-Ohio).  As Senator Coons stated in a press release:

Today, U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics and personalized medicine.

The group presented a framework to amend Section 101 to limit patentability exclusions, and focus patentability on other sections of the Patent Act, namely Sections 102 (novelty), 103 (obviousness) and 112 (enablement and written description).  The framework is reproduced below:

  • Keep existing statutory categories of process, machine, manufacture, or composition of matter, or any useful improvement thereof.
  • Eliminate, within the eligibility requirement, that any invention or discovery be both “new and useful.” Instead, simply require that the invention meet existing statutory utility requirements.
  • Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent The sole list of exclusions might include the following categories, for example:
    • Fundamental scientific principles;
    • Products that exist solely and exclusively in nature;
    • Pure mathematical formulas;
    • Economic or commercial principles;
    • Mental activities.
  • Create a “practical application” test to ensure that the statutorily ineligible subject matter is construed narrowly.
  • Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.
  • Statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.
  • Make clear that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.

Section 101 issues can be encountered in PTAB post-grant reviews, covered business method review, and inter partes review when amended claims are presented.