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.
[Congressional Bills 118th Congress]
[From the U.S. Government Publishing Office]
[S. 2140 Introduced in Senate (IS)]
<DOC>
118th CONGRESS
1st Session
S. 2140
To amend title 35, United States Code, to address matters relating to
patent subject matter eligibility, and for other purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
June 22, 2023
Mr. Tillis (for himself and Mr. Coons) introduced the following bill;
which was read twice and referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To amend title 35, United States Code, to address matters relating to
patent subject matter eligibility, and for other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Patent Eligibility Restoration Act
of 2023''.
SEC. 2. FINDINGS.
Congress finds the following:
(1) As of the day before the date of enactment of this Act,
patent eligibility jurisprudence interpreting section 101 of
title 35, United States Code, requires significant modification
and clarification.
(2) For many years after the original enactment of section
101 of title 35, United States Code, the Supreme Court of the
United States and other courts created judicial exceptions to
the wording of that section, thereby rendering an increasing
number of inventions ineligible for patent protection.
(3) Efforts by judges of district courts and courts of
appeals of the United States to apply the exceptions described
in paragraph (2) to specific circumstances have led to
extensive confusion and a lack of consistency--
(A) throughout the judicial branch of the Federal
Government and Federal agencies; and
(B) among patent practitioners.
(4) Many judges of the United States Court of Appeals for
the Federal Circuit and of various district courts of the
United States have explicitly expressed the need for more
guidance with respect to the meaning of section 101 of title
35, United States Code, and many patent owners, and persons
that engage with patent owners, complain that the
interpretation of that section is extremely confusing and
difficult to discern and apply with any confidence.
(5) Under this Act, and the amendments made by this Act,
the state of the law shall be as follows:
(A) All judicial exceptions to patent eligibility
are eliminated.
(B) Any invention or discovery that can be claimed
as a useful process, machine, manufacture, or
composition of matter, or any useful improvement
thereof, is eligible for patent protection, except as
explicitly provided in section 101 of title 35, United
States Code, as amended by this Act, as described in
subparagraphs (D) and (E) of this paragraph.
(C) Sections 102, 103, and 112 of title 35, United
States Code, will continue to prescribe the
requirements for obtaining a patent, but no such
requirement will be used in determining patent
eligibility.
(D) The following inventions shall not be eligible
for patent protection:
(i) A mathematical formula that is not part
of an invention that is in a category described
in subparagraph (B).
(ii) A mental process performed solely in
the mind of a human being.
(iii) An unmodified human gene, as that
gene exists in the human body.
(iv) An unmodified natural material, as
that material exists in nature.
(v) A process that is substantially
economic, financial, business, social,
cultural, or artistic.
(E) Under the exception described in subparagraph
(D)(v)--
(i) process claims drawn solely to the
steps undertaken by human beings in methods of
doing business, performing dance moves,
offering marriage proposals, and the like shall
not be eligible for patent coverage, and adding
a non-essential reference to a computer by
merely stating, for example, ``do it on a
computer'' shall not establish such
eligibility; and
(ii) any process that cannot be practically
performed without the use of a machine
(including a computer) or manufacture shall be
eligible for patent coverage.
SEC. 3. PATENT ELIGIBILITY.
(a) In General.--Chapter 10 of title 35, United States Code, is
amended--
(1) in section 100--
(A) in subsection (b), by striking ``includes a new
use of a known process'' and inserting ``includes a
use, application, or method of manufacture of a known
or naturally-occurring process''; and
(B) by adding at the end the following:
``(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.''; and
(2) by amending section 101 to read as follows:
``Sec. 101. Patent eligibility
``(a) In General.--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.
``(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.
``(2) Conditions.--For the purposes of subparagraphs (D)
and (E) of paragraph (1), a human gene or natural material
shall not be considered to be unmodified if the gene or
material, as applicable, is--
``(A) isolated, purified, enriched, or otherwise
altered by human activity; or
``(B) otherwise employed in a useful invention or
discovery.
``(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.
``(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.''.
(b) Technical and Conforming Amendment.--The table of sections for
chapter 10 of title 35, United States Code, is amended by striking the
item relating to section 101 and inserting the following:
``101. Patent eligibility.''.
<all>
Introduced in Senate
Read twice and referred to the Committee on the Judiciary.
Committee on the Judiciary Subcommittee on Intellectual Property. Hearings held. With printed Hearing: S.Hrg. 118-460.
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