On August 2, 2022, Sen. T. Tillis introduced the Patent Eligibility Restoration Act (S.4734) in an effort to clarify which inventions are actually patentable and to codify those that are not. Since the Supreme Court handed down its decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, (2012) and Alice v. CLS Bank, 573 U.S. 208 (2014), courts, attorneys and inventors have struggled with the metes and bounds of what subject matter can and what cannot be patented. While S.4734 seeks to remedy the growing ambiguity borne from Mayo, Alice and its progeny by expressly removing considerations of novelty and non-obviousness in determining eligible subject matter, and codifying those inventions not eligible for patents, the proposed language may breed more ambiguity.

Presently, 35 U.S.C. §101 is a single sentence broadly defining a patentable invention as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” For decades, courts have struggled with the scope of this language to determine whether certain inventions are proper subject matter justifying patent protection. The Supreme Court, through its decisions in Mayo, Alice, and others, has required inventors to show that their inventions, despite being a process, machine, manufacture, or composition of matter, provide “significantly more” than just an abstract idea, law of nature or natural phenomenon.

Therein lies the problem: what is “significantly more” than an abstract idea, law of nature or natural phenomenon? In Mayo, the Supreme Court held that what constitutes “significantly more” cannot include well-understood, routine, or conventional elements or steps. This restriction, however, creates even more ambiguity by conflating the question of subject matter eligibility with the requirement of novelty and non-obvious. The Alice/Mayo test has left courts, attorneys and inventors with an ambiguous and amorphous process of determining whether an invention is the proper subject matter for a patent.

The newly proposed bill attempts to bring clarity by expressly codifying certain “judicial exceptions” and removing any consideration of novelty or non-obviousness. Proposed §101(c)(1) states:

(1) IN GENERAL.—In determining whether, under this section, a claimed invention is eligible for a patent, eligibility shall be determined—
(A) by considering the claimed invention as a whole and without discounting or disregarding any claim element; and
(B) without regard to—
(i) the manner in which the claimed invention was made;
(ii) whether a claim element is known, conventional, routine, or naturally occurring;
(iii) the state of the applicable art, as of the date on which the claimed invention is invented; or
(iv) any other consideration in section 102, 103, or 112.

While S.4734’s clear demarcation of eligible subject matter from questions of novelty and non-obviousness is clear enough, the proposed bill’s “Eligibility Exclusions” are not. Section (b)(1) recites express exclusions, among others, for a process that “is a non-technological economic, financial, business, social, cultural, or artistic process.” In what also appears to be a significant limitation on software-based patents, Section (b)(2) provides:

Notwithstanding paragraph (1)(B)(i), a person may obtain a patent for a claimed invention that is a process described in such provision 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.

The proposed language is vague and works against the very reason this bill is necessary. It would also appear to exclude or significantly limit software as patentable subject matter. The bill does not define or otherwise detail any of the terms used in the process exception, leaving inventors, attorneys, and ultimately the courts with several questions, for example: What is “non-technological?” What are “social, cultural, or artistic” processes? How far “beyond merely storing and executing” does a process claim need to go? Is software patentable at all?

The language offered in these exceptions, if enacted, would require significant judicial interpretation to bring any substantial meaning to them. Sen. Tillis introduced S.4734 to remedy a law that “has become confused, constricted, and unclear.” Despite providing some much-needed clarification, S.4734 relies on vague and ambiguous exceptions that may lead us right back to the same confused and unclear landscape in which we currently find ourselves.

It is unclear if or when The Patent Eligibility Restoration Act of 2022, in its current form, will become law. Look here for updates and continued analysis as the bill proceeds through Congress.