Eliminating the Jargon: An Alternative Proposal for Section 101 Reform

“The proposal by Senator Tillis addresses many of the concerns voiced by stakeholders over Section 101 [but] introduces additional ‘jargon’ into the lexicon of Section 101 jurisprudence…. The proposal I have set forth eliminates most of the jargon created by the courts while introducing few new terms that will need interpretation.”

https://depositphotos.com/209932054/stock-photo-notebook-helmet-traffic-cones-table.htmlOn August 3, Senator Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2022, S.4734, which would amend the U.S. Patent Act to clarify the patent eligibility of certain technologies under 35 U.S.C. Section 101. Few would disagree that the current state of eligibility jurisprudence is in “abysmal shambles”, and recognizing that U.S. eligibility law needs changing comes from both side of the aisle, as Senator Chris Coons (D-DE) has long questioned the court-made exceptions to patent eligibility. Recently, in an Amici Curiae Brief before the Supreme Court, Senator Tillis joined the Honorable Judge Paul Michel (ret.) and former Director of the United States Patent and Trademark Office (USPTO), David Kappos, in stating that the test for the court-made exceptions to patent eligibility “has created a chaotic state of affairs that … threatens serious negative jurisprudential and real-world consequences to America’s technological leadership” and “render[s] the U.S. patent system unstable and reliable at its core.”  In the same vein, Donald Chisum, author of the preeminent treatise on patent law, recently referred to the “Court’s erratic and irrational interpretation of the Section 101 definition of patent eligible subject matter.”

Examples of inventions that have been declared invalid under Section 101 include a multi-lens, digital camera, a garage door opener, a method of manufacturing a driveshaft for a vehicle, and a charging station for electric vehicles.

Multi-lens, digital camera:  U.S. Patent No. 6,611,289 (Yu v. Apple)

Vehicle driveshaft:  U.S. Patent No. 7,774,911 (American Axle v. Neapco)

My personal experience dealing with Section 101 comes from 25 years practicing before the USPTO in 1,000+ patent applications and hundreds of appeals before the Patent Trial and Appeal Board (PTAB). Section 101 has evolved from an issue rarely raised by the USPTO to one that is raised in over 90% of patent applications in certain technology areas. I have gone from addressing a Section 101 rejection from the USPTO once every couple of years to seeing one nearly every day. Since handling Section 101 rejections is a large part of my practice, I have extensively followed the developments of 101 jurisprudence in the courts and the efforts of those in Congress to enact statutory changes to Section 101. In so doing, I have contemplated how Section 101 could be improved, and thus my proposal regarding how to revise the statutory language follows.

Section 101. Patent eligibility

Whoever Without exception, any human who invents or discovers any new human-made and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject solely to the conditions and requirements of this title.

Comments:  The terms “[w]ithout exception” and “solely” are added to Section 101 to clarify:  (i) the court-made exceptions to patent eligibility are abrogated and (ii) to ensure that the courts do not determine what kind of subject matter is patent eligible. The terms “human” and “human-made” are added to Section 101 to clarify that only human-made inventions are patent eligible and only humans can be inventors.

Section 102 – Conditions for patentability; novelty

(e) Nature Effective as Prior Art.—For purposes of determining novelty of a claimed invention under subsection (a)(1), a natural process or natural material shall be deemed to have been in public use before the effective filing date of the claimed invention.

Comments:  Subsection (e) effectively prevents an unmodified natural material or natural process from being patented.

Section 271 – Infringement of patent

(e)(7) It shall not be an act of infringement for a human being —

(A) to perform a human mental activity,

(B) to perform a human physical activity, or

(C) to possess a human gene.

Comments:  Subsection (e)(7) effectively prevents ‘being human’ as being the basis for patent infringement. If a claim element could be interpreted as encompassing both human activity and non-human activity (e.g., a computer), the human activity would not cause infringement of the claim element whereas the computer activity would cause infringement of the claim element. Also, a presence of a human gene within a human cannot be the basis for infringement.

Section 282 – Presumption of validity; defenses

(b) Defenses.—The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement or unenforceability.

(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability, except that section 101 is not a condition for patentability and failure to meet any requirement of section 101 shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable including unenforceable under subsection (b)(1).

(3) Invalidity of the patent or any claim in suit for failure to comply with—

(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or

(B) any requirement of section 251.

(4) Any other fact or act made a defense by this title.

Comments:  The changes to subsection (b)(1) effectively remove the courts from invalidating patents under Section 101. As originally drafted in 1951, Section 101 was not labeled a “condition for patentability” and therefore was not intended to be a defense to patent infringement. These changes will allow courts to focus on whether patents are invalid because of prior art rather than what they do today, which is make policy decisions as to what technology should or should not be patentable. Policy decisions as to patent eligibility are best left to Congress.

Bills in Congress typically get a Popular or Short Title and an Official Title. My proposal for the Short Title is “PROTECTING Humans and Nature Act” and the Official Title is “Patent Reform Of Technology Eligibility Compared To INeliGibility of Humans and Nature Act.”

The different stakeholders have varying concerns as it pertains to patent eligibility. The following underlying principles, which I used to craft this proposal, reflect many of these concerns.

Congress Makes Patent Law – Not the Courts

Under Article I Section 8 Clause 8 of the U.S. Constitution, the power to create patent law is vested in Congress – not the courts. In crafting the exceptions to statutory subject matter, the Supreme Court has encroached upon that power and effectively made policy decisions as to what should or should not be patent eligible under U.S. patent law. However, the right to make these policy decisions is vested with Congress, and Congress is best positioned to make patent eligibility policy decisions.

Humans are Inventors – Not Inventions

The U.S. Constitution does not expressly forbid human-related inventions. However, I believe Congress should make the policy decision that being human (i.e., having human genes, thinking or performing physical activities) should not subject a person to being sued for patent infringement. Humans should not be inventions. Recently, the courts have addressed the issue of whether Artificial Intelligence (AI) can be an inventor under U.S. Patent Law. Although the Federal Circuit has unambiguously held that AI cannot be an inventor, this proposal explicitly addresses this issue by stating that only a human can be an inventor.

Natural Products/Processes are Not Inventions

The U.S. Constitution also does not expressly forbid inventions to natural products/processes. In fact, the U.S. Constitution expressly refers to “discoveries,” which implies that an invention could previously exist and be discovered. However, I believe that Congress should make the policy decision that unmodified natural products/processes per se are not inventive.

Reduce the “Jargon” that Leads to Inconsistent Application of Section 101

Section 101 case law is replete with jargon having uncertain/ambiguous meanings. A non-exhaustive list of this jargon includes “abstract idea,” “significantly more,” “inventive concept,” “insignificant extra-solution activity,” “organizing human activity,” “fundamental economic practice,” “focus of the asserted claims,” “integrate the building blocks into something more,” “well-understood, routine, and conventional,” “directed to,” “technological process,” and “generic computer” among others. Reasonable minds have disagreed and will continue to disagree as to the meaning of every one of these terms. Because of the ambiguity of these terms, determining patent eligibility becomes an eye of the beholder test where the meanings of these terms can be twisted one way or another, like a nose of wax, to arrive at a desired result as to patent eligibility. In other words, a decision maker (either at the USPTO or in the courts) can predetermine whether a patent is eligible under Section 101 and then interpret the jargon to arrive at the desired result.

The proposal by Senator Tillis addresses many of the concerns voiced by stakeholders over Section 101. However, his bill introduces additional “jargon” into the lexicon of Section 101 jurisprudence and leaves in place much of the old, ambiguous jargon. For example, what constitutes “a non-technological economic, financial, business, social, cultural, or artistic process”?  What is meant by “merely storing and executing, the steps of the process that the machine or manufacture perform”?  The courts have already shown a propensity to take the Supreme Court’s exceptions and expand upon them, and we should expect that the court would interpret this new language using the same result-oriented approach that they used to interpret the old jargon.

The proposal I have set forth eliminates most of the jargon created by the courts while introducing few new terms that will need interpretation by the courts. This will reduce the ability of the courts to subsequently intrude upon Congress’s prerogative to set patent policy.



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Join the Discussion

9 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    September 7, 2022 05:07 pm

    Interesting. But I think that the Tillis language was meant to destroy pretty much all information processing patents. So, I think this has pretty much zero chance.

    Plus, I think that if this passes, it would be very interesting to see how the Scotus deals with it. My bet: the Scotus will strike it down and say that Alice is still good law because it is based on the Constitution. We’ll see.

    But it is nice to dream.

  • [Avatar for Josh S.]
    Josh S.
    September 2, 2022 12:08 pm


    How does your scheme handle prodrugs? If human physical activity — such as metabolic activity — is deemed non-infringing, would you be able to establish inducement to infringe on the part of the prodrug manufacturer?

  • [Avatar for B]
    September 2, 2022 07:50 am

    Dear Mr. Paul,

    I always love when a good write does a detailed post mortem on an idiotic Federal Circuit decision as well as has some interesting insight into how the meaning of words (or lack thereof) gives rise to dangerous outcomes.

    @ concerned – I will be begging an amicus later today from said author

  • [Avatar for MaxDrei]
    September 2, 2022 06:04 am

    I suspect that inserting into 101 the adjective “human-made” would raise more questions than it answers. How sharp is the boundary between what is “human-made” and what is not?

    Mind you, I like the echo of the 17th century definition of eligibility in England viz “manner of new manufacture”.

  • [Avatar for Anon]
    September 2, 2022 02:43 am

    Bravo – and without any horses of wood.

  • [Avatar for CharlieSeattle]
    September 1, 2022 07:34 pm

    Ya, terms as strong as, “SHALL NOT INFRINGE” are needed.

  • [Avatar for Pro Say]
    Pro Say
    September 1, 2022 07:20 pm

    Superb proposal Scott. Superb.

    The next best option after eliminating Section 101 entirely.

    While I presume that Senator Tillis (and the other committee members) will read or otherwise see your proposal, you may want to Express or Priority Mail it to all the members.

    Cheap insurance indeed.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    September 1, 2022 07:09 pm

    First, a question: do you mean to eliminate ODP when you write “… subject solely to the conditions and requirements of this title”? If so, I have no great objections. If not, however, then presumably one would want to add something codifying ODP, because the “solely” should eliminate ODP along with the 101 exceptions.

    Second, a comment: if something like this could pass Congress, it would be great. I agree that this language resolves difficulties that the present Tillis language either engenders or at least does not resolve. Can this language pass? The fact that Rep. Massie’s bill never even got a hearing suggests small hope on that point.

  • [Avatar for concerned]
    September 1, 2022 06:36 pm

    Mr. Paul:

    Thank you for your article.

    I would appreciate an amicus on Re: Killian upon our request for CAFC en banc.

    We agree with you on many of these issues.

    Thank you for your consideration.