Courts have long struggled with determining what makes an invention eligible for a patent by applying broad and ill-defined “I know it when I see it” tests that sometimes prevent breakthrough technologies from receiving patent protection. A new bill proposed by Senator Thom Tillis aims to both simplify the determination of patent eligibility and expand protection to classes of inventions that have previously been excluded.
In a series of momentous decisions starting in about 2009, the Supreme Court interpreted the Patent Act to require courts to conduct a two-part test to determine whether an invention would be eligible for patent protection. This test aims to prevent someone from receiving a patent for a claimed invention falling into one of several broad and vaguely defined categories of ineligible subject matter, such as mathematical formulas, scientific theories, and products of nature. The Supreme Court and many lower federal courts have used this test to remove patent protection for inventions that claimed isolated genetic material, diagnostic methods, and business methods run on computers. But the Supreme Court has otherwise provided little guidance on how courts should apply this test. This lack of clarity has led to extensive litigation that leaves many inventions vulnerable to attack.
Senator Tillis’s bill, the Patent Eligibility Restoration Act, seeks to overhaul the relevant section of the Patent Act in several key ways. First, the proposed law would narrow the exceptions to patent eligibility by providing a specific list of subject matter that would be excluded from patent protection. The proposed law would also determine whether an invention could receive a patent by looking at the invention as a whole and would only reject patent claims that describe excluded subject matter. Most notably, the bill would reverse the Supreme Court’s previous rulings by expanding patent protection to genes and products of nature that are isolated, enriched, or “otherwise altered by human activity” as well as to inventions that incorporate and manipulate an otherwise-excluded process within a machine.
The bill is important for both patent owners and competitors because it will expand the scope of patentability and remove a major challenge to patents during litigation. While there will likely be some litigation to resolve ambiguous wording in the bill, the net result will be a streamlined patent approvals process and stronger protections for existing patents. A stronger patent system, in turn, will likely result in cheaper patent litigation and increased investment in fields where patents are especially vulnerable to attack by challengers.
To learn more about how this bill could affect your patents, please contact the author or your lawyer at McCarter & English, LLP.