Overhaul of Section 101 of the Patent Act Gaining Momentum in Congress

Wednesday, June 19, 2019

Members of Congress are leading efforts to draft legislation that would eviscerate the decisions of Alice and Mayo by rewriting Section 101 of the Patent Act.  Senators Thom Tillis (R – N.C.) and Chris Coons (D-Del.) have introduced a draft bill to rewrite Section 101 and have held hearings in early June 2019 to discuss the impact of the bill.  The legislation is intended to to expand patent eligibility.

Tillis and Coons state that Alice and other high court decisions related to 101 lack clarity about what inventions fall into abstract ideas, laws of nature and natural phenomena.  Such a lack of clarity has resulted into too much legal uncertainty and ultimately discourages investment in new technology.  Critics have long argued that Alice and Mayo have resulted in too many patents being invalidated and caused confusion about what is patentable.

In March 2019, the Federal Circuit found patents directed to electric charging stations as being invalid for being directed to an abstract idea.  ChargePoint, Inc. v. SemaCONNECT, Inc., 920 F.3d 759 (Fed. Cir. 2019).  Corey Salsburg, global head of IP affairs at Novartis noted at one of the hearings that patent applications on a digital microscope and a laser surgical system were rejected as ineligible and stated that the company is “deeply concerned that eligibility is on a collision course with future of medicine.”   Sen. Coons asked, “Can we really justify discouraging investments in seeking a cure for cancer or the next generation of autonomous vehicles?”

The draft bill states 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.”   In addition, the draft expressly removes the word “new” from the current language of 101.  The intent is to shift questions regarding whether a claimed invention is patentable away from 101 and to other areas of the Patent Act, such as Sections 102 and 103 which focus on whether the claimed invention is novel and unobvious, respectively, over the prior art.

Additionally, the draft bill states that patent eligibility “shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitations”.  This language is intended to bar courts from rejecting complex patents by simply parsing down claimed language into a basic concept and then characterizing the basic concept as an abstract idea that is ineligible.  This approach improperly ignores all of the claimed features.  The draft also adds a definition for “useful” as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”

The proposed legislation also includes a provision limiting the use of functional language in claims which describe what the invention does rather than what the invention is.  Tillis states that the intent of the provision is to ensure that “vague business methods and generic computer claims can’t pass muster and be weaponized against small businesses, startups and entrepreneurs.”  Tills has asked for feedback and revisions to the draft and intends to introduce a final bill on Section 101 after the July 4th recess.