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Congress Holds Hearings On Patent Eligibility

on Wednesday, 26 June 2019 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

The Senate concluded three days of hearings on June 11, 2019, regarding proposed bipartisan changes to Section 101 of the Patent Act. Section 101 of the Patent Act sets forth patent eligible subject matter and has been the source of much debate over the last decade with Supreme Court decisions expanding judicial exceptions to exclude large categories of subject matter from patent eligibility. The seminal Supreme Court cases of AMP v. Myriad1 and Alice Corp. v. CLS Bank International2 largely placed human genes and software outside the realm of patent eligibility, respectively. While subsequent court decisions and changes in patent drafting have seen patents issue with claims directed toward these categories, the proposed Senate bill would remove hurdles to patents directed toward these judicial exceptions from a subject matter eligibility perspective.

The proposed language of the Senate bill provides that:

No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.

Further, the bill provides that subject matter eligibility must be determined independent from how the invention was made, whether one or more limitations in the claims are well-known, conventional, or routine, and without regard to the other statutory categories of patentability. Together these modifications, along with the other statutory revisions of the bill, aim to eliminate several decades of Supreme Court precedent regarding the categories and bounds of judicial exceptions to patent eligible subject matter. Moreover, analyzing patent eligibility in a “vacuum” attempts to avoid conflating a subject matter eligibility analysis with other limitations of patentability, such as novelty and obviousness.

On the whole, this bill can be seen as inventor and patent friendly, leading to criticism from groups opposed to human gene-related patents. However, while this bill would drastically reduce rejections for software and gene based inventions under patent eligible subject matter, these inventions will still face scrutiny under the other, and arguably more appropriate, statutory standards of patentability.

AriAnna C. Goldstein


1 Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013).
2 Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

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