Michael Cicero

On 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.

In Allen v. Cooper, the U.S. Supreme Court held that the Copyright Remedy Clarification Act of 1990 (CRCA) (codified at 17 U.S.C. §§ 501(a) & 511) did not abrogate a state’s sovereign immunity from copyright infringement liability. A casual reading of that decision might have led one to reasonably believe that it ended the plaintiffs’ copyright case. After all, the Supreme Court indicated that it affirmed a holding that the CRCA was “invalid.” But, as with so many other issues encountered in the legal realm, much lies below the surface. The aftermath of the Supreme Court’s decision cast light on the realization that the Court addressed only “prophylactic” abrogation, which seeks to deter constitutional harm before it occurs. On remand, the plaintiffs convinced the district court to consider whether the state’s sovereign immunity could be negated via a “case by case” type of abrogation, which requires actual violation of both a federal statute and the Fourteenth Amendment.