US senators release draft bill to reform section 101
US senators have released a draft bill to reform section 101, one of the most debated sections of the country’s Patent Act.
The draft bill was announced in a statement on May 22 by Republican Thom Tillis and Democrat Chris Coons, who are chairman and ranking member of the Senate Judiciary Subcommittee on IP, respectively, and US representatives Doug Collins, Hank Johnson and Steve Stivers.
According to the announcement, the draft bill considers feedback from “dozens of stakeholders, industry representatives and inventors” after a framework was released in April.
As it currently stands, section 101 states: “Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”.
The reform proposes to add a second part to this: “Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.”
This was met with criticism by the Electronic Frontier Foundation, a nonprofit committed to “defending digital privacy, free speech, and innovation”, which said that requiring eligibility to be determined based on the claimed invention as a whole is another way of saying “ignore the words the claim actually uses to describe the invention”.
“The claim is the part of a patent that actually defines the ‘invention’ that others are prevented from using,” the EFF added, warning that this change will abrogate Alice vs CSL Bank and “make it inapplicable in any future case”.
In Alice, the US Supreme Court established a two-part test for subject matter eligibility.
First, courts must determine whether patent claims are directed to patent ineligible concepts, such as an “abstract idea”. Second, there must be an “inventive concept”, meaning the claims, when considered both individually and in combination, transform the subject matter into an eligible, inventive concept.
The draft bill noted that the provisions of section 101 will be “construed in favour of eligibility”.
“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”, it said.
Tillis said he believes this draft framework represents a “true balance that will restore integrity, predictability and stability” to the US patent system, “while also preventing the issuance of overly broad patents”.
The language contained in the draft bill text is not final, and is subject to additional revision. On June 4, 5 and 11, Coons and Tillis will hold Senate Judiciary Subcommittee on IP hearings to gain additional stakeholder feedback.
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