Subject-matter eligibility under 35 U.S.C. § 101 has been a hot-button issue in United States patent law since 2014, when the U.S. Supreme Court decided Alice Corp. v. CLS Bank Int’l. In that case, the Supreme Court decided that patent claims could not be “directed to” abstract ideas, laws of nature, and natural phenomena without “significantly more.” This decision called into question the validity many software and medical treatment patents. The Federal Circuit and the United States Patent and Trademark Office (USPTO) have struggled to apply this test consistently, and there have been many calls for the Supreme Court or Congress to clarify the Alice test and to specify what subject matter is eligible for patent.

Congress may be stepping up to the plate. On August 3, Senator Thom Tillis introduced the “Patent Eligibility Restoration Act of 2022,” which aims to expand and clarify the scope of patent-eligible subject matter. This bill comes on the heels of the Supreme Court’s declining to take up American Axle & Manufacturing Inc. v. Neapco Holdings LLC, a Federal Circuit decision in which a method for tuning an automobile transmission was deemed patent ineligible subject matter. Thus, while previous patent eligibility bills failed to pass through Congress, they may now see the issue as one the Supreme Court is unwilling to tackle and that now requires a legislative solution. Therefore, this bill may provide a glimpse at the future of § 101.

The bill starts by setting forth a list of patent ineligible subject matter. It states that a patent cannot claim any of the following “if claimed as such”:

• “a mathematical formula, apart from a useful invention or discovery”
• “A process that –
  • Is a non-technological economic, financial, business, social, cultural, or artistic process;
  • Is a mental process performed solely in the human mind; or
  • Occurs in nature wholly independent of, and prior to, any human activity.”
• “An unmodified human gene, as that gene exists in the human body”
• “An unmodified natural material, as that material exists in nature”

This list generally tracks with the judicial exceptions we have seen at the Supreme Court and Federal Circuit, but it notably does not include any machines or manufactures. This may be targeting cases like Chamberlain Grp. Inc. v. Techtronic Indus. Co. (finding a garage door remote to be patent-ineligible subject matter).

The bill also includes some limits on these exceptions to patentable subject matter. For example, the bill states that “a human gene or natural material that is isolated, purified, enriched, or otherwise altered by human activity, or that is otherwise employed in a useful invention or discovery” would not be excluded subject matter. This would functionally overturn Assoc. for Molecular Pathology v. Myriad Genetics, Inc., an important Supreme Court decision on the patent eligibility of genetic material, and as such would expand the scope of what kinds of genetic material can be patented.

Additionally, the bill includes an exception to the prohibition on processes that are “non-technological economic, financial, business, social, or artistic.” The bill states that one can still obtain a patent to that kind of process “if that process is embodied in a machine or manufacture, unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform.” This language is still ambiguous, and seems similar to Alice’s “directed to without significantly more” test.

The bill also includes some interesting prohibitions on what can be considered when evaluating subject-matter eligibility. It says eligibility shall be determined “without regard to”:

• “the manner in which the claimed invention was made”
• “whether a claim element is known, conventional, routine, or naturally occurring”
• “the state of the applicable art, as of the date on which the claimed invention is invented” or
• “any other consideration in section 102, 103, or 112.”

The prohibition on considering whether a claim element is “known, conventional, routine, or naturally occurring” could be the most significant change for software patents. It seems to suggest that conventional steps (receiving/transmitting data over the internet, displaying it on a screen, etc.) performed by a processor could be enough to overcome any § 101 challenges.

Overall, the bill, as it is today, would certainly expand the scope of patent-eligible subject matter, and would bring the scope of § 101 back to a pure question of subject-matter eligibility rather than an analysis of whether a claim is too abstract. However, the bill does not perfectly clarify patent eligibility for software patents, where terms like “non-technological,” “claimed as such,” and “integrating, beyond merely storing and executing” can be incredibly impactful depending on how they are interpreted by the courts. The bill will most likely be amended significantly as stakeholders weigh in on its contents. At this point, we just have to wait and see what happens with the bill in the coming months and years.