Bills aim to shake up US patent law

Legislation to tackle uncertainty surrounding what is patent-eligible subject matter and reforming the USPTO’s post grant review process was introduced last week in the US senate

US senators introduced two bills last week – one intended to clarify what is patent-eligible subject matter and the other detailing overhauling the USPTO’s Patent Trial and Appeal Board (PTAB) practice.

The first – the Patent Eligibility Restoration Act – would make it harder to invalidate patents over eligibility questions.

A press release introducing the bill on US senator Thom Tillis’s website said that due to a series of Supreme Court decisions, patent eligibility law in the US had become confused, constricted and unclear. This has led to inconsistent case decisions, uncertainty in innovation and investment communities, and unpredictable business outcomes.

US senator Chris Coons, who is also introducing the bill, noted that critical technologies like medical diagnostics and AI can be protected with patents in Europe and China but not in the US.

The bill is designed to codify exceptions to patent eligibility and address the uncertainties that exist particularly around what inventions are considered abstract under patent law given that abstract ideas cannot be patented.

Amendments in the bill include the elimination of all judicial exceptions to patent eligibility. It states that any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement, is eligible for patent protection, except as explicitly provided in section 101 – the part of the US patents act that sets out what type of inventions are patent eligible.

McKool Smith principal Nick Matich said: “The bill is a thoughtful attempt to clean up the current mess of section 101. There will undoubtedly be some grey areas and places for case law to develop if it passes, but the bill would be a significant positive improvement over the status quo.”

Senator Tillis added: “This bipartisan legislation with Senator Coons maintains the existing statutory categories of eligible subject matter, which have worked well for over two centuries, and addresses concerns regarding inappropriate eligibility constraints by enumerating a specific but extensive list of excluded subject matter.”

Andrei Iancu and David Kappos, co-chairs of the Council for Innovation Promotion (C4IP) and former USPTO Directors, said the bill was much needed to foster the development of next-generation technologies across many innovative industries.

“The United States is losing its standing as the world’s innovation leader,” they added, with products in AI, medical diagnostics, quantum computing and telecommunications currently categorically ineligible for patent protection


A second bill affecting US patent law was also introduced last week that aims to change the USPTO’s post-grant review practice at the Patent Trial and Appeal Board (PTAB). Senator Coons and Tillis, along with colleagues Dick Durbin and Mazie Hirono, introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.

Some of the key clauses include a requirement for “standing for PTAB challengers”. Currently, anyone can challenge a patent in the PTAB, even if they are not facing a lawsuit or the threat of a lawsuit and repeat challenges to the same patent can be filed by different parties. The bill wants to limit these repeated petitions. Under this bill, petitioners must have been sued or threatened with a patent infringement lawsuit before filing a PTAB challenge – and limit multiple petitions against the same patent by “prohibiting any entity financially contributing to a PTAB challenge from bringing its own challenge”.

When validity of a patent is challenged in a district court, “clear and convincing” evidence is needed to invalidate the patent. But at the PTAB, a petitioner need only show invalidity by a “preponderance of the evidence” standard. Further, until recently, the PTAB interpreted patent claims under a different standard than the district court. The PREVAIL Act, however, requires the PTAB to find a patent invalid by “clear and convincing” evidence and requires the PTAB to interpret claims using the same “plain and ordinary meaning” standard used in federal district court.

It also is calling for parties to choose whether to bring their action at the PTAB or in district court, but not both, in an effort to end duplicative proceedings and make the system more streamlined.

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