Grüneberg and Myers - Intellectual Property Law


News and Recent Developments

Congress Releases a New Draft to Change Patent Subject Matter Eligibility

A follow-up on ”Is a big change coming for patent subject matter eligibility?” - See also our later update about subsequent Congressional hearings on patent subject matter eligibility reform.

About a month ago, Congressional IP subcommittee members revealed a framework aimed at changing to the section 101 of the U.S. patent statutes. We gave our initial reaction to the proposed framework then. This week, the subcommittee released a draft bill text. The draft reads as below, with proposed additions to the statute underlined and deletions [[bracketed]]:

Section 100

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

Section 101

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any [[new and]] useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 112

(f) Functional Claim Elements [[Element in Claim for a Combination]] – An element in a claim [[for a combination]] may be expressed as a [[means or step for performing]] a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Notably, the draft states its intent to abolish the “judicial exceptions” to eligibility—such as abstract ideas, laws of nature, and natural phenomena—in additional legislative provisions in favor of eligibility accompanying the above draft. These additional provisions also prescribe that eligibility under 101 shall be determined without regard to questions of novelty, obviousness, clarity, or support under sections 102, 103, or 112. The draft also removes the closed list of ineligible categories previously present on the framework.

The draft broadly defines the meaning of the word “useful” in section 100 and also takes out the word “new” in section 101, consistent with its stated intent of favoring eligibility without regard to other sections of patentability. The new proposed section (b) of section 101 seems to reflect the USPTO eligibility guidelines published earlier this year, requiring eligibility determination to consider an invention as a whole, rather than dissecting and analyzing individual limitations.

The proposed amendment to section 112 could impact the balance between structure and function in claim interpretation. It appears to make an attempt to do away with of the formalistic approach around special treatment of the term ”means” in means-plus-function claims.

The continued quest to revamp patent eligibility has intriguing potential to shape the future landscape that applicants will navigate in seeking patent protection, particularly in areas pertinent to software and medical diagnostics. We continue to closely watch for further developments, as the process may continue in Congress soon.

Eric Myers