Tillis Bill Would Restore Needed Clarity and Predictability in Patent Eligibility Law

Over the last 15 years, the United States Supreme Court has mutated patent eligibility into an impossibly complex and confusing mess. The Court’s current eligibility test strays far from Congress’s original intent, erodes trust in predictability, and has left many remarking that innovation in the United States is falling behind due to uncertainty of patent eligibility law. Even more troubling, the resulting uncertainty of patent ineligibility for large swaths of innovation in critical technology areas, including artificial intelligence, poses significant risks to U.S. competitiveness, economic growth and national security.

The Court has had opportunities to rectify its patent sinkhole but recently declined another chance to mend the chaos. When the Court denied certiorari in American Axle v. Neapco—despite the Solicitor General’s plea to hear the case—it became clear that Congress must step in to rescue U.S. innovation.

Restoring Certainty

The bipartisan Patent Eligibility Restoration Act of 2022, introduced by Senator Tillis, does just that. The bill would clarify what inventions are eligible for patent protection. By abrogating the Court’s eligibility test that has put patent protection into disarray and providing eligible subject-matter categories with limited exclusions, the Patent Eligibility Restoration Act will provide increased clarity and predictability while giving inventors the certainty they need to invest in groundbreaking technologies.

While many have applauded the bill, those favoring weak patent rights have made false claims, such as that the bill would allow the patenting of human genes, or that it would open the floodgates to “bad software patents.” The bill does no such thing. The bipartisan legislation results from nearly four years of stakeholder discussions across a broad spectrum of industries and communities. And a closer look at the bill’s text shows that these false flag attacks against it are unfounded.

Specifically, while Section 101(a) of the new bill maintains the current statutory scope of patent-eligible subject matter (processes, machines, manufactures, compositions of matter, and improvements thereof), the bill also lists certain “eligibility exclusions” in Section 101(b) that are the only exceptions to eligible subject matter. These exclusions are: “(1) mathematical formulas, apart from a useful invention or discovery, (2) processes (a) that are non-technological economic, financial, business, social, cultural, or artistic, (b) that can be performed solely in the human mind, or (c) that occur in nature independent of human activity, (3) unmodified human genes and (4) unmodified natural material.” The bill also provides that excluded non-technological processes are patentable if 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 process steps that the machine or manufacture performs. And the bill affords patentability to innovative techniques involving human genes and natural materials that are “isolated, purified, enriched, or otherwise altered by human activity, or that is otherwise employed in a useful invention or discovery.”

Of equal importance, the bill resets the proper scope of analysis of Section 101 relative to Sections 102 and 103. Clarifying Section 101 by removing “new,” the bill clarifies that Section’s 102 novelty gatekeeper role and Section 103’s obviousness requirement appropriately serve their respective roles. The bill also appropriately mandates that eligibility determinations should consider whole claims rather than discounting claim elements, as in the Court’s current eligibility-determination process. Thus, the bill nicely separates eligibility from other patentability tests to realign with the drafters’ intent of the 1952 Patent Act.

The Example of In re Killian

Those who prefer to see the current disarray of Section 101 law contend that the Patent Eligibility Restoration Act would result in a surge in “do it on a computer” software patents, in which otherwise ineligible subject matter is carried out by computer software. But these kinds of patent claims are ineligible under the bill, which deals with this issue directly. Take, for example, patent claims at issue in the Federal Circuit’s recent decision in In re Killian, 45 F.4th 1373 (Fed. Cir. 2022).

In Killian, the Federal Circuit affirmed the PTAB’s affirmance of an examiner’s rejection under Section 101 of patent claims “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” The Federal Circuit found that the claims—which called for accessing federal and state databases, selecting an individual from the databases, determining whether the individual was receiving SSDI benefits, identifying the name and Social Security number of the individual, and deciding whether the person was eligible for SSDI benefits based on identified information and legal requirements—were steps that the human mind could achieve and that the inclusion of a generic computer to perform these steps did not save the claim. The decision then analyzed whether the claims contained an “inventive concept,” as required under the Supreme Court’s eligibility test, and found that they did not, rendering them invalid under Section 101.

Under the framework laid out in the Patent Eligibility Restoration Act, the Killian claims would meet the same fate. Here, the claimed process for determining the eligibility for Social Security benefits clearly falls under section (b)(1)(B)(i), which states that “non-technological economic, financial, business, social, cultural, or artistic” processes are excluded from patent eligibility. The claims are not impacted by section (b)(2)(A) for processes implemented on machines either because they recite nothing more than “merely storing and executing” the steps of the process on a computer. Notably, and as demonstrated here, analysis under the Patent Eligibility Restoration Act’s framework is more straightforward than the Court’s current framework, which also requires assessing whether an “inventive concept” confers eligibility onto claims. In this way, many of the “do it on a computer” patents that the bill’s opponents point to would fare the same under Senator Tillis’ bill. [Editor’s Note: Killian’s counsel has shared his argument as to why the claims should be patent eligible here.]

Getting Back on Equal Footing

The Patent Eligibility Restoration Act strikes a proper balance by allowing patents for cutting-edge technologies that are at risk but excluding non-technological inventions that are merely performed on a computer. The bill would not, as some claim, allow the patenting of human genes or cause the sky to fall with a flood of software patents. Instead, the bill injects clarity and predictability into Section 101 law, something stakeholders, practitioners and jurists have sought for years. Clearing up the muddy waters of patent eligibility will put the U.S. back on equal footing with our global peers, providing much-needed aid to our innovation economy.

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