When we first wrote about the Patent Eligibility Restoration Act (PERA), I had no idea I would have the honor of being invited to testify before the Subcommittee on Intellectual Property of the Senate Judiciary Committee, but on January 23, 2024, I was one of eight witnesses who shared our views on the state of patent eligibility in the U.S. and the need for legislative reform.
I testified on the life sciences panel along with the Honorable Andrei Iancu, former undersecretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office (USPTO); Richard Blaylock, speaking on behalf of Invitae Corporation; and Philip Johnson, speaking on behalf of the Coalition for 21st Century Patent Reform. Professor Adam Mossoff, Antonin Scalia School of Law, George Mason University; Mark Deem, Lightstone Ventures; David Jones, High Tech Inventors Alliance; and the Honorable David Kappos, former undersecretary of commerce for intellectual property and director of the USPTO were witnesses on the computer-related technologies panel.
I was interested in what the other witnesses had to say, but as a stakeholder, I was even more interested in the senators’ comments. Legislative reform is not going to happen without their commitment and determination.
Senator Chris Coons (D-DE) noted that the original intent of § 101 was to make “anything under the sun as made by man” eligible for patenting, while “other provisions in the Patent Act requiring an invention be novel, non-obvious, have a written description, and so forth [would serve] as the fine filters to patentability.” He described how, in the wake of the U.S. Supreme Court decisions in Alice, Mayo, and others, “fewer inventions are patent eligible in the United States particularly in rapidly advancing fields like medical diagnostics, software, and artificial intelligence. However, those same inventions are still eligible for patent protection abroad.” He noted that patent eligibility has become uncertain for inventors, investors, patent examiners, and judges. Senator Coons emphasized that the Supreme Court has repeatedly refused to provide greater clarity, making it clear that legislative action — such as PERA — is necessary.
Senator Coons explained that “PERA will return eligibility to important inventions like biotechnology, medical diagnostics, 5G, AI, blockchain” and “will also make clear what is not patent eligible.” He outlined PERA as clarifying eligibility “in three ways”: by “abolish[ing] judicially created exceptions to patent eligibility,” by “clarify[ing] that eligibility determinations are to be made by considering every claim element of the patent as a whole and without regard to the novelty nonobvious and disclosure requirements,” and by setting forth “a specific but extensive list of excluded subject matter while maintaining the existing statutory categories of eligible matter.”
Ranking Member Tillis
Senator Thom Tillis (R-NC) expressed strong views that Congress must address patent eligibility. He noted that the Supreme Court decisions have left patent eligibility law “confused, constricted, [and] unclear,” which “has led to inconsistent case decisions, uncertainty in innovation and investment communities, and unpredictable business outcomes.” He stated, “This lack of clarity threatens to hinder innovation and to unseat the United States as the world’s innovation leader,” especially in “new and emerging technology sectors [such] as precision medicine, artificial intelligence, quantum computing and 5G wireless and beyond.”
He explained that PERA “will restore patent eligibility to important inventions across key areas of technology” and “addresses concerns regarding inappropriate eligibility…by enumerating a specific but extensive list of excluded subject matter.”
Senator Mazie Hirono (D-HI) noted that the Supreme Court decisions have “created a mess relating to patent eligibility,” and “the hope is that this legislation will provide some level or a lot of predictability to the patent system.” That said, she acknowledged that “nothing is ever particularly simple.” She noted that it “seemed very reasonable” that the “manipulation of nature by human beings” should be eligible for patenting and emphasized the difference between eligibility and a patent being granted.
Senator Marsha Blackburn (R-TN) raised concerns over increasing competition from China and invited witnesses to explain how PERA will enable the U.S. to better compete on a global scale. She highlighted lost research and development opportunities associated with the current state of eligibility and noted that technologies relating to health care software and quantum computing sectors are particularly vulnerable to lost investment under current patent eligibility law.
Senator Alex Padilla (D-CA) recognized that patent eligibility is a complicated and complex issue. He invited witnesses to explain how PERA would impact consumers — positively or negatively — in various industries.
The Next Steps For PERA
This hearing on PERA was an important step on the road to legislative reform of U.S. patent eligibility, but there is still a long road ahead. The next step could be the “markup” process, where the current language of the bill could be revised and refined. From there, the full Judiciary Committee would consider it, and if it survives that process, the full Senate and the House. We will continue to track PERA’s progress, but until the judicial exceptions are eliminated, we also will be tracking the latest court decisions on § 101.