SWIPLit

By Zachary G. Schroeder,* Jacob C. Jones, and David G. Barker

In April, we posted an article titled “Section 101 in 2019” summarizing the existing patent eligibility test, discussing recent Federal Circuit decisions, and providing practical strategies for practitioners to navigate the Section 101 landscape. That article highlighted the lack of certainty and predictability under existing law.

Bipartisan lawmakers recently released a draft revision to Section 101 abrogating U.S. Supreme Court precedent that has denied patent eligibility where the claimed invention is directed to an abstract idea, law of nature, or natural phenomenon. The bipartisan, bicameral draft bill was created following feedback from numerous stakeholders. In support of the bill, Sen. Thom Tillis, R-N.C., claimed it “represents a true balance that will restore integrity, predictability, and stability to our nation’s patent system, while also preventing the issuance of overly broad patents.”

The draft revision to Section 101 replaces language that a claimed invention be “new and useful” with the requirement that the invention need only be “useful.” The draft defines “useful” as the “specific and practical utility in any field of technology through human intervention.” The draft also includes several important “Additional Legislative Provisions,” outlining further goals for the contemplated revision.

Four practical implications arise from the draft:

First, the proposed new law would return the “new” analysis to Sections 102 and 103, removing it from Section 101. The proposal eliminates the word “new” from Section 101 and states that Section 101 eligibility “shall be determined without regard to” conventionalness, “the state of the art at the time of the invention,” or “any other considerations relating to Sections 102, 103, or 112.”

Second, the draft legislation would eliminate judicially created exceptions to patent eligibility detailed in the Supreme Court’s Alice and Mayo decisions. The draft states that “no implicit or other judicially created exceptions to subject matter eligibility . . . shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.” By eliminating the Alice/Mayo framework, the draft would help resolve uncertainty and inconsistency that has affected the United States patent system.

Third, a new “usefulness” definition appears, with the limitation that the invention or discovery must “provide[] specific and practical utility in any field of technology through human intervention.” Unless revised, this new limitation might be wielded heavily as litigants fight over the meaning of “technology.”

Fourth, the draft states that “section 101 will be construed in favor of eligibility,” which, in practice, could mean that doubts may be resolved against a holding of patent ineligibility under Section 101.

The proponents of the draft held a final closed-door roundtable on Thursday, May 23 to solicit additional feedback. Senators Chris Coons, D-DE, and Tillis plan on holding Senate Judiciary Subcommittee on Intellectual Property hearings on June 4, 5, and 11 regarding the state of patent eligibility in the United States.

Feedback on the proposal may be sent to IntellectualProperty@tillis.senate.gov.

* Zachary G. Schroeder is a summer associate in Snell & Wilmer’s Phoenix office, working under the supervision of David G. Barker. He is anticipated to graduate from The University of Iowa College of Law in May 2020.