“A bill to amend title 35, United States Code, to address matters relating to patent subject matter eligibility, and for other purposes.”
No CRS summary available for this bill.
This section declares congressional findings that patent eligibility jurisprudence under 35 U.S.C. 101 requires modification due to judicial exceptions causing confusion among courts, agencies, and practitioners. It further specifies that, under this Act, (1) all judicial exceptions to eligibility are eliminated; (2) any invention or discovery claimed as a useful process, machine, manufacture, or composition of matter (or useful improvement thereof) is eligible except as explicitly provided; (3) §§102, 103, and 112 do not determine eligibility; and (4) ineligible inventions include mathematical formulas not part of such an invention, mental processes performed solely in the human mind, unmodified human genes (in the body or isolated but otherwise unchanged), unmodified natural materials, and substantially economic, financial, business, social, cultural, or artistic processes—provided that processes requiring a machine or manufacture (e.g., a computer) are eligible and adding a non-essential computer reference to ineligible processes does not confer eligibility.
This section revises the definition of "process" in 35 U.S.C. §100(b) to include a use, application, or method of manufacture of a known or naturally-occurring process (from a new use of a known process); adds §100(k) defining "useful" as a specific and practical utility from the perspective of a person of ordinary skill in the art; replaces §101 with new patent eligibility standards; and makes a conforming amendment to the table of sections for chapter 10. The new §101(a) provides for patents on any useful process, machine, manufacture, or composition of matter (or useful improvement thereof), subject to exclusions in §101(b) and other title 35 requirements. (As background, current §101 similarly limits patentable subject matter but relies on judicially developed exceptions for abstract ideas, laws of nature, and natural phenomena.) Section 101(b)(1) excludes from patentability (if claimed as such): (A) mathematical formulas not part of an eligible invention; (B) substantially economic, financial, business, social, cultural, or artistic processes (even if referring to a machine or manufacture); (C) mental processes performed solely in the human mind or processes occurring wholly in nature independent of human activity; (D) unmodified human genes as they exist in the body; and (E) unmodified natural materials as they exist in nature. Section 101(b)(2) provides conditions under which these exclusions do not apply, including if the invention requires a machine or manufacture to perform practically ((b)(1)(A)-(B)); or if human genes or natural materials are purified, enriched, altered by human activity, or employed in a useful invention ((b)(1)(D)-(E)). Section 101(c) directs eligibility determinations by considering the claimed invention as a whole without discounting elements or regard to the invention's manner of creation, whether elements are known/conventional/routine/naturally occurring, the state of the art, or considerations under §§102, 103, or 112; and authorizes courts in infringement actions to resolve eligibility (including via motion with limited discovery) when no genuine factual issues exist. (Thus, eligibility is separated from novelty, nonobviousness, and description requirements.)
This section establishes rules of construction clarifying that (1) the Act and its amendments do not affect or alter the judicially-created doctrine of obviousness-type double patenting (i.e., a judge-made rule barring patent claims obvious over a patent or application commonly owned by the same inventor), and (2) for the exclusions to patent eligibility in new 35 U.S.C. 101(b)(1)(A) and (B), claim language reciting pre- or post-solution activity by a computer (or other machine or manufacture) does not confer eligibility if that activity is not necessary to practically perform the invention.