By Glen Thurston
Recently, bipartisan legislation has been introduced into the U.S. Congress to amend Section 101 of the U.S. Patent Act. The legislation is titled the Patent Eligibility Restoration Act (PERA). PERA would amend Section 101 so that certain inventions would be patent eligible and alter the U.S. Supreme Court’s decision in Alice.
Background
As has been the case since 1793, 35 U.S.C. § 101 broadly defines subject matter statutorily eligible for a patent as “any new and useful process, machine, manufacture, or composition of matter, or any new or useful improvement thereof.”
Courts have long interpreted this language broadly, but have created exceptions to subject matter that might otherwise be patentable looking only at the language of Section 101. For example, courts have held that laws of nature [1], physical phenomena [2], and abstract ideas [3] are not patentable.
Specifically addressing the abstract idea exception, the Court in Alice held that “merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention.” [4] This decision has led to inventors having a more difficult time patenting software inventions; courts and the U.S. Patent and Trademark Office commonly interpret them as mental processes implemented by a computer.
Patent Eligibility Restoration Act (PERA)
The bipartisan Patent Eligibility Restoration Act [5] (PERA) aims to change that. PERA would amend Section 101 to provide that “any process that cannot be practically performed without the use of a machine (including a computer) or manufacture shall be eligible for patent coverage,” altering the Court’s holding in Alice. [6] PERA would also provide that eligibility under Section 101 is determined independently of patentability under any other section, including Sections 102 (novelty) and 103 (non-obviousness).
On the other hand, PERA codifies some aspects of the current judicial exceptions, for example by denying eligibility to “business method” patents and a “gene [as it] exists in the human body.” [7]
Although PERA is unlikely to become law in the near future, parties should participate in the legislative process due to the potential impact on the U.S. patent system.
- See, e.g., O’Reilly v. Morse, 56 U.S. 62 (1853).
- See, e.g., Gottschalk v. Benson, 409 U.S. 63 (1972).
- See, e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874).
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
- H.R. 9474, 118th Cong., 2d Sess. (Sept. 6, 2024); S. 2140, 118th Cong., 1st Sess. (June 22, 2023).
- This has its roots in centuries-old case law. Wintermute v. Redington, 30 F. Cas. 367, 370 371 (C.C.N.D. Ohio 1856) (“It is true that a patent can not be sustained for a mere principle. For instance, Sir Isaac Newton’s discovery of the principle of gravitation could not be the subject of a patent. But it is equally true, that a principle may be embodied and applied, so as to afford some result of practical utility in the arts and manufactures, and that under such circumstances a principle may be the subject of a patent. It is, however, the embodiment and the application of the principle which constitute the grant of the patent.”).
- H.R. 9474, 118th Cong., 2d Sess. (Sept. 6, 2024); S. 2140, 118th Cong., 1st Sess. (June 22, 2023).
