How the Patent Eligibility Restoration Act 2023 Can Be Still Further Improved

“The location of the Section 2 Declaration, solely in the Congressional findings / preamble portion of the PERA of 2023, jeopardizes its ability to be accorded any weight in a court’s interpretation of Section 101.”

efficient infringersOn June 22, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act (“PERA”) of 2023.

Elsewhere, I have discussed the substantive changes that the PERA of 2023 made to its predecessor, the PERA of 2022; how several of the changes in the 2023 legislation to the proposed updated version of Section 101 of the Patent Act directly addressed criticisms of statutory language originally proposed in the PERA of 2022; and why the changes result in a clearer bill that even further enhances patent eligibility.

I now consider the question: as good as the new proposed Section 101 reads in the PERA of 2023, is there room for still further improvement? The answer is “yes,” for the reason discussed below.

The ‘Judicial Exceptions’ Elimination Declaration in Section 2 of the PERA of 2023

Section 2 of the PERA of 2023 (Congressional findings / preamble) declares: “All judicial exceptions to patent eligibility are eliminated.” This declaration (“the Section 2 Declaration”) only appears in Section 2, and is absent from the proposed amended Patent Act Sections 100 and 101 text recited in Section 3 of the PERA of 2023.

The Section 2 Declaration expresses an intent to legislatively overrule troublesome Supreme Court precedent concerning Section 101. As I have asserted previously,   even the PERA of 2022 already implicitly overruled that precedent, due to its proposed revisions to both Sections 100 & 101 of the Patent Act. The Section 2 Declaration thus makes express what the proposed statutory revisions already imply.

Yet, the location of the Section 2 Declaration, solely in the Congressional findings / preamble portion of the PERA of 2023, jeopardizes its ability to be accorded any weight in a court’s interpretation of Section 101.

The Stringent Requirement of a ‘Clear and Certain Signal from Congress’

In the patent eligibility case of Parker v. Flook (1978), the Supreme Court quoted Deepsouth Packing Co. v. Laitram Corp (1972) (with emphasis added here):

[We] should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought.

Although “Congress intended to overturn the holding in Deepsouth” regarding a separate statute (§ 271(f) – see Cardiac Pacemakers (Fed. Cir. 2009)), the above quote from Deepsouth survives, as demonstrated by its recitation in Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 95 Civ. 8833, 2001 U.S. Dist. LEXIS 16895, 2001 WL 1263299 (D. Del. Oct. 19, 2001). Thus, the Parker v. Flook quote of Deepsouth remains a part of United States patent eligibility law.

As stated in a 2023 Fourth Circuit decision: “[A]bsent a clear manifestation of contrary intent, a newly-enacted or revised statute is presumed to be harmonious with existing law and its judicial construction.” (emphasis added; citations and internal quotation marks omitted); see also Helsinn Healthcare (2019) (“[W]e presume that when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase.”). Accordingly, the Parker Deepsouth requirement for “a clear and certain signal from Congress” sets the bar quite high to convince a court that Congress intended to overrule Supreme Court precedent by amending the Patent Act.

Certainly, the text of the Section 2 Declaration, when considered in isolation, reads like a clear statement of Congressional intent. Yet its sole location in the PERA of 2023 preamble gives a court an escape hatch to avoid its consideration when interpreting Section 101.

“[I]n America ‘the settled principle of law is that the preamble cannot control the enacting part of the statute in cases where the enacting part is expressed in clear, unambiguous terms.’” District of Columbia v. Heller (2008) at Footnote 3 (citation omitted). “Or to put the point differently, operative provisions should be given effect as operative provisions, and prologues as prologues.” Id; see also id. at Footnote 4 (“a prologue can be used only to clarify an ambiguous operative provision . . . .”) and Hymas (Fed. Cir. 2016) (“In any event, a preamble cannot overcome the statute’s plain language.”) (citing Heller). Thus, if Congress were to enact the amendments to Section 101 as presently written and a court were to deem the amended Section 101 “unambiguous,” then it would be free to disregard the PERA Congressional findings altogether, including the Section 2 Declaration.

Congress Should Copy the Section 2 Declaration Into Section 101 Itself

To further strengthen Section 101, Congress should copy the text of the Section 2 Declaration into Section 101 itself and add therein a statement of intent to overrule judicial precedent inconsistent with amended Section 101. This would more strongly align the statutory text with legislative intent and would further reduce the possibility of a judicial interpretation at odds with the Section 2 Declaration.

Congress ought to therefore consider further amending Section 101 to insert a new subsection (a) stating “All judicial exceptions to patent eligibility are eliminated, and to the extent judicial precedent invoked patent eligibility exceptions not enumerated in this Section, all such judicial precedent is hereby expressly overruled,” and to renumber the ensuing subsections accordingly.

Image Source: Deposit Photos
Author: tashatuvango
Image ID: 31248541 


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

8 comments so far.

  • [Avatar for Pro Say]
    Pro Say
    July 5, 2023 03:28 pm

    Everything considered, the only certain way to keep court’s noses out of eligibility today, tomorrow, and forever, is this:

    Eliminate Section 101 from the Patent Code.

    102, 103, and 112 have always — and will always — prevent patents on that which should not be patented.

    Anything less — anything — will not provide the innovation insurance America so desperately needs.

    No mere words will ever be able to drain the 101 morass.


    No written chemotherapy or radiation will be effective for long.

    The only permanent cure for this cancer is its excision.


  • [Avatar for B]
    July 5, 2023 09:43 am

    Dear Mr. Cicero

    I have zero problem with your article – and believe it’s on the right track.

    That said – get rid of 101(b).

    Also, there’s a lot of other b.s. that needs to go that is the job of 102/103, and clouds more than clears

    Truth: this is a trash attempt at patent reform. Rep. Massey got it right

  • [Avatar for Mike Cicero]
    Mike Cicero
    July 4, 2023 09:36 pm


    Thank you for your feedback. You raise an interesting question concerning the omission of “new” from the proposed amended version of Section 101 in the PERA bills. I believe that the striking of that word from both Sections 100(b) & 101 is in keeping with proposed subsection 101(c)(1)(A)(iv), which seeks to exclude s.102 (as well as 103 & 112) criteria from eligibility determinations.

  • [Avatar for Anon]
    July 4, 2023 11:51 am

    A better – and much more (yet suitably) stronger clear and certain signal would be for Congress to employ their own Constitutional power of jurisdiction stripping from the Supreme Court the non-original jurisdiction of hearing patent cases.

    Of course, as the Supreme Court has tainted the CAFC (revisit the psychological thought experiment of fire-hosing simians in a cage any time that they climb a ladder in the middle of the cage to reach a hanging bunch of bananas), re-setting the lower Article III Court should be in the cards as well (and also keep in mind that having AN Article III Court — not necessarily the Supreme Court — is all that is required to maintain satisfaction of Marbury.

  • [Avatar for Charles E. Miller, Association of Amicus Counsel]
    Charles E. Miller, Association of Amicus Counsel
    July 4, 2023 10:11 am

    Michael —
    You suggest that the ” Section 2 Declaration” in the congressional findings / preamble portion of the 2023 PERA which indicates the elimination of judicial exceptions from 35 U.S.C. 101 eligibility inquiries should be stated in the text of 101 in order to convey a ‘clear and certain signal from Congress’ to the courts. Fair enough. Now, Quaere: does the word “new” in current 101 conflict with the novelty criteria in Section 102? While the the word “new” does not appear in the text of 102, the synonymous term “novelty” appears in its preamble. Do you think that’s why S. 4734 omits “new” from 101 as amended, i.e., to convey a “clear and certain signal from Congress” to the courts that an invention or discovery need not be “new” vis-vis the novelty criteria in 102 in order to be patent-eligible under 101? Thoughts, anyone?

  • [Avatar for Yenrab]
    July 3, 2023 02:26 pm

    Clear language that “a process or method shall be deemed eligible for a patent notwithstanding it being directed to a law of nature or a series of steps that could be carried out mentally” would not be operative to overrule current judicially made law, as it would be read in a way that was consistent with current law which says you can’t get a patent on those things. I wish the Court would have thought up an airtight way to read Dodd Frank as being inoperative!

  • [Avatar for Model 101]
    Model 101
    July 2, 2023 08:55 pm


  • [Avatar for Anon]
    July 2, 2023 12:50 pm

    I would posit (especially in view of Flook, that it is critical to view precisely which Justice is saying what in the battle over patent eligibility over the years.

    May I remind all that Justice Stevens lost his majority-writing position on what was to have been his “bookend” case on the High Court (and his ‘dissent dressed as a concurrence) in Bilski would have expressly rewritten the direct words of Congress vis a vis business methods….

Varsity Sponsors

IPWatchdog Events

Patent Portfolio Management Masters™ 2024
June 24 @ 1:00 pm - June 26 @ 2:00 pm EDT
Webinar – Sponsored by LexisNexis
August 22 @ 12:00 pm - 1:00 pm EDT
Women’s IP Forum
August 26 @ 11:00 am - August 27 @ 5:00 pm EDT
IP Solutions, Services & Platforms Expo
September 9 @ 1:00 pm - September 10 @ 2:00 pm EDT

From IPWatchdog