Reflections on Potential Legislative Reform of the Patent Eligibility Standard

While some see the impact of Alice as a much-needed correction of “bad” and overreaching patents and rampant abuse by the patent system of nefarious “patent trolls,” others see the results of these judge-made standards as destroying the U.S. patent system and a tremendous setback for our country's position as a leader in innovation. As such, in late May, Sens. Thom Tilli, (R-NC), and Chris Coons (D-DE), and Reps. Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), proposed a bicameral and bipartisan draft bill that would reform the patent eligibility standard in an effort to quell concerns about the adverse impact on U.S. innovation without reopening the floodgates to overreaching patents. See, http://bit.ly/2YiESbr.

Interestingly, in April, prior to disseminating the proposed bill, the same congressional team first proposed a “framework” for patent eligibility, which included a list of specific exclusions, including “fundamental scientific principles; products that exist solely and exclusively in nature; pure mathematical formulas; economic or commercial principles; and mental activities.”  Commentators raised concerns about the meaning and impact of these exclusions, and the current bill does not include them. Instead, the proposed bill deletes the word “new” from Section 101, the patent eligibility statute, and only requires that the invention be “useful.” (Thus, re-shifting the focus on novelty to other areas of the patent statute, which is appropriate in my view.) Useful is then defined in proposed Section 100 (k) as meaning “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” The bill also includes a new provision in Section 112(f) regarding functional claiming and expressly abrogates the three judge-made exceptions to patent eligibility (abstract ideas, laws of nature and natural phenomena).