Over the past two weeks, the Subcommittee on Intellectual Property in the U.S. Senate conducted hearings on a draft bill text that would change the law on patent subject matter eligibility. The availability of U.S. patent coverage for software, wireless technologies, medical diagnostics, and personalized medicine took center stage in the hearings.

As we previously reported, the draft would set aside years of court-developed precedent about the per se ineligibility of abstract ideas, laws of nature, and natural phenomena, which courts have recently applied to deny patent coverage for many software and medical diagnostic inventions. Instead, the proposed law would require “specific and practical utility in any field of technology through human intervention.” To balance the broader eligibility standard, the draft text would then revise a different section of the patent statute, section 112(f), to limit the scope of functionally-defined claim language, even when the specific words “means” or “step” do not appear in the claims.

Since then, in three afternoons of hearings (on June 4, June 5, and June 11), a total of forty-five witnesses weighed in on the proposed changes. The witnesses included corporate counsel, small business owner-inventors, former USPTO officials, prominent patent attorneys, nonprofit organizations, and law professors. Among those in industry, most work in software, pharmaceuticals, or biotechnology.

Consensus emerged that the revisions would indeed change the patent eligibility statute to abrogate at least the recent judicial developments on patent eligibility. While not all stakeholders agreed, many prominent voices, including Former Chief Judge Paul Michel of the Federal Circuit, expressed concern about a lack of clarity and predictability arising from Bilski, Alice, Mayo, and Myriad and the federal appellate decisions that have followed. However, views still differed as to whether Congress should abandon the current case law.

Among witnesses opposed to the draft bill, several noted that current patent eligibility law provides for early-stage judicial resolution of infringement litigation, without proceeding with the expense of discovery. Subcommittee members appeared to consider the benefits of resolving litigation efficiently. Other witnesses noted the availability of inter partes review and other procedures for efficiently halting enforcement of over-broad patent claims before litigation becomes too involved or expensive.

Several witnesses questioned the scope or precision of the phrase “any field of technology,” which the draft text employs in defining the term “useful.” Others drew a connection to certain parts of the Patent Cooperation Treaty, also featuring the term “technology.”

Opinions also differed about the wisdom of the proposed changes for functional claim language. For claims that define an element mainly by its function and not by its structure, the proposed changes would limit such an element to the corresponding structures described in the specification and their equivalents. Some witnesses opposed this change, worried that such a narrow reading of claim scope could weaken patent protection and permit copying with only minor changes to an invention. Subcommittee members appeared to consider possible further revisions.

Through the hearings, Congress has shown a serious interest in clarifying patent subject matter eligibility. In particular, Subcommittee members expressed eagerness to bring software and medical diagnostics back into the realm of patent coverage, at least for well-defined, well-supported, and inventive developments. We continue to keep a keen eye on the latest developments in patent subject matter eligibility.