Improving Clarity for Patent Eligibility of Emerging Technologies: The Patent Eligibility Restoration Act of 2023

At its heart, U.S. patent law is favorable for inventors. The underlying law that enables inventors to obtain patent protection, 35 U.S.C. § 101, states in its text that any inventor may receive a patent for any invention that falls within four broad categories: machines, manufactures, processes, and compositions of matter. Therefore, the statute effectively allows patents to be granted for “everything under the sun made by man.”

However, the reality is that there are limitations surrounding what qualifies for patent protection, and those limitations are sometimes applied inconsistently, leaving inventors, investors, attorneys, and examiners confused about whether a new invention is considered “patent-eligible.” Specifically, judicial exceptions (i.e., opinions handed down by judges through the process of litigation) have been put in place over the years that place limits on what inventions are considered eligible for patenting. These exceptions include the broad categories of: abstract ideas, laws of nature, and natural phenomena.

Courts have attempted to clarify what counts as “patent-eligible subject matter” under these three categories. However, those individuals who create or are otherwise involved in emerging technology areas are familiar with the frustrations associated with the lack of clarity when it comes to predicting what will be determined to be patent-eligible and what will be considered to fall under a judicial exception. The subject-matter areas where this confusion occurs most frequently include medical innovation and diagnostics, software, artificial intelligence, and computing. Because of the financial opportunities present in these emerging technologies, lawmakers are concerned that the lack of clarity surrounding patent protection may drive innovation and investment overseas.

Therefore, on June 22, 2023, the U.S. Senate released a bill, The Patent Eligibility Restoration Act of 2023 (referred to as “PERA”), that aims to clarify patent eligibility. The goal of PERA is to provide clear guidelines for courts to determine patent eligibility in a consistent manner while promoting technological advancements across a wide variety of fields. This should, in turn, provide clarity to all those involved in the patent system such as inventors, attorneys, and examiners.

The novel approach that PERA takes is to lay out specific categories that are considered to involve patent-ineligible subject matter instead of broad, vague principles to be interpreted and determined by the courts. Some of these categories include (1) a mathematical formula that is not part of a useful process, machine, manufacture, or composition; (2) a mental process that is performed solely in the human mind; or (3) an unmodified human gene as the gene exists in the human body. By explicitly listing clear and consistent rules for courts to follow when making subject matter eligibility determinations, lawmakers hope that PERA will restore investment and innovation in the U.S. as inventors and investors alike would know from the time of conception whether their invention is eligible for patenting. PERA is currently with the Senate Judiciary Committee, which has conducted one hearing. We will keep you apprised of any status changes on this potentially impactful legislation.

Please feel free to reach out to us if you have any questions. We would be more than happy to provide additional information and insights about this evolving area of law!