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Is a big change coming for patent subject matter eligibility?

Last week, Congress signaled that it may consider taking action on patent subject matter eligibility under section 101 of the U.S. patent statutes. U.S. Senators Chris Coons (D-Del.) and Thom Tillis (R-N.C.), the ranking member and chair of the Judiciary Subcommittee on Intellectual Property, along with Representatives Doug Collins (R-Ga.), Hank Johnson (D-Ga.), and Steve Stivers (R-Ohio), released a framework on Section 101 patent subject matter eligibility reform.

The framework proposes keeping existing patent-eligible categories, then clearly defining a closed list of ineligible categories to replace the “judicial exceptions” that have developed in the courts. It would separate questions like novelty, obviousness, and adequate description from questions of subject matter eligibility. Perhaps most notably, it would provide a “practical application” test to limit ineligibility, but would also prevent a finding of eligibility based only on generic technical/functional language.

Congress is also asking for feedback on the initial framework via email at IntellectualProperty@tillis.senate.gov.

Subject matter eligibility questions, and their potential barriers to patentability, have received widespread attention in recent years, particularly in the fields of medical diagnostics and IT. While this framework may be the start of some favorable developments for patent applicants, it still could still mean that courts and the USPTO will disregard technical/functional language, a practice that has blocked potentially valuable patent protection for innovative work.

Still, at this very early stage, many things could change before Congress makes any meaningful changes to the statutes. For now, we continue to watch for further developments.

Eric Myers