S 2140 — Patent Eligibility Restoration Act of 2023

Summary

Patent Eligibility Restoration Act of 2023 This bill amends the law relating to patent subject matter eligibility to establish that only specified subject matter (e.g., a natural process wholly independent of human activity) is ineligible for patenting. (Currently, subject matter eligibility is determined by examining whether the claimed invention is directed to certain ineligible categories, and if so, whether there is an inventive concept. Subject matter eligibility is one of several requirements that an invention must satisfy in order to receive patent protection.) Under this bill, an invention shall be considered to involve patent-ineligible subject matter only if it falls within specified categories, such as (1) a mathematical formula that is not part of a useful process, machine, manufacture, or composition; (2) a mental process that is performed solely in the human mind; or (3) an unmodified human gene as the gene exists in the human body.

Bill Text

• Introduced Introduced in Senate Current html June 22, 2023

Compared against current U.S. Code AI-generated reading aid — verify against the official bill.

The bill amends 35 U.S.C. § 101 to clarify and expand the criteria for patent eligibility while introducing specific exclusions.

• 35 U.S.C. § 101

  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. → Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject only to the exclusions in subsection (b) and to the further conditions and requirements of this title.

  This change clarifies that patent eligibility is subject to specific exclusions listed in subsection (b), rather than general conditions.

• 35 U.S.C. § 101

  (b) Eligibility Exclusions.-- (1) In general.--Subject to paragraph (2), a person may not obtain a patent for any of the following, if claimed as such: (A) A mathematical formula that is not part of a claimed invention in a category described in subsection (a). (B)(i) Subject to clause (ii), a process that is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture. (ii) The process described in clause (i) shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture. (C) A process that-- (i) is a mental process performed solely in the human mind; or (ii) occurs in nature wholly independent of, and prior to, any human activity. (D) An unmodified human gene, as that gene exists in the human body. (E) An unmodified natural material, as that material exists in nature.

  This addition establishes specific exclusions to patent eligibility, which were not explicitly defined in current law.

• 35 U.S.C. § 100

  includes a new use of a known process → includes a use, application, or method of manufacture of a known or naturally-occurring process

  This change broadens the definition of what constitutes a use of a known process, allowing for more interpretations under patent law.

• 35 U.S.C. § 100

  (k) The term `useful' means, with respect to an invention or discovery, that the invention or discovery has a specific and practical utility from the perspective of a person of ordinary skill in the art to which the invention or discovery pertains.

  This addition provides a definition for 'useful,' clarifying the standard for utility in patent eligibility.

• 35 U.S.C. § 101

  (c) Eligibility.-- (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.

  This addition specifies the approach for determining patent eligibility, ensuring that the claimed invention is considered entirely.

• 35 U.S.C. § 101

  (2) Infringement action.-- (A) In general.--In an action brought for infringement under this title, the court, at any time, may determine whether an invention or discovery that is a subject of the action is eligible for a patent under this section, including on motion of a party when there are no genuine issues of material fact. (B) Limited discovery.--With respect to a determination described in subparagraph (A), the court may consider limited discovery relevant only to the eligibility described in that subparagraph before ruling on a motion described in that subparagraph.

  This addition allows courts to determine patent eligibility at any time during an infringement action.

Action History

1. January 23, 2024

   Committee on the Judiciary Subcommittee on Intellectual Property. Hearings held. With printed Hearing: S.Hrg. 118-460.

2. June 22, 2023

   Introduced in Senate

3. June 22, 2023

   Read twice and referred to the Committee on the Judiciary.

Sponsors

• Thomas Tillis · Primary

Subjects