A bi-partisan coalition of federal lawmakers recently unveiled a framework to reform 35 U.S.C. § 101 for basic patent eligibility. It includes and Senators Thom Tillis and Chris Coons and Representatives Doug Collins, Hank Johnson, and Steve Stivers.  Senator Coons stated, “Today, U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine.  I look forward to continuing to receive feedback as we craft a legislative solution that encourages innovation.”


Under the current model for ascertaining patentability under Section 101, the first step of the U.S. Patent and Trademark Office’s eligibility analysis involves evaluating whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified under the statute: process, machine, manufacture, or composition of matter. If it falls within the statutory categories, the test is complete and is allowable subject matter for an invention.  If an invention fails the first step,the second step involves determining whether the invention as claimed also qualifies as patent-eligible subject matter. The three judicial exceptions that the courts have found to be outside of, or exceptions to, the four statutory categories of invention are abstract ideas, laws of nature and natural phenomena, including products of nature.  These judicial exceptions are not found within the statute, but have been interpreted to further limit the breadth of otherwise allowable inventions.

Pursuant to the U.S. Supreme Court’s decisions in Alice Corp. Pty. Ltd. v. CLS Bank Int’l573 U.S. _, 134 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66  (2012), a patent claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. In other words, the first part of the Alice/Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).  If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.

In the wake of the Supreme Court’s decisions in Alice and Mayo, there has been a great deal of uncertainty and disagreement over what should be considered judicial exceptions. Earlier this year, the USPTO published Revised Patent Subject Matter Eligibility Guidance, which revised how patent examiners should analyze claims under Mayo/Alice test.


Congress is now also looking to bring greater predictability to patent subject matter eligibility analysis. As outlined by the lawmakers, Congressional Section 101 reform would entail the following:

  • Keep existing statutory categories of process, machine, manufacture, or composition of matter, or any useful improvement thereof.
  • Eliminate, within the eligibility requirement, that any invention or discovery be both “new and useful.” Instead, simply require that the invention meet existing statutory utility requirements.
  • Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent The sole list of exclusions might include the following categories, for example:
    • Fundamental scientific principles;
    • Products that exist solely and exclusively in nature;
    • Pure mathematical formulas;
    • Economic or commercial principles;
    • Mental activities.
  • Create a “practical application” test to ensure that the statutorily ineligible subject matter is construed narrowly.
  • Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.
  • Statutorily abrogate judicially created exceptions to patent-eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.
  • Make clear that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.

It is unclear whether Congress’ attempts to reform U.S. patent law will ultimately help or hurt innovation due to the limited nature of the current proposal without specific law proposals written. Nonetheless, it is encouraging that a bi-partisan coalition of lawmakers recognizes that Section 101 needs to be addressed.