An Overview of Proposed Changes in the ‘Patent Eligibility Restoration Act of 2023’

by Dennis Crouch

Senators Tillis and Coons have released their “Patent Eligibility Restoration Act of 2023” designed to overturn the Supreme Court case of Mayo and Alice Corp.  The impact here is to return eligibility doctrine back to the mid 2000s when almost any useful advance was likely patent eligible.

Here are some key points:

1. Elimination of Judicial Exceptions: The Act proposes to eliminate all judicial exceptions to patent eligibility. “Under this Act, and the amendments made by this Act, the state of the law shall be as follows: (A) All judicial exceptions to patent eligibility are eliminated.”

2. Statutory Ineligibility Categories: The Act specifies that that the following are not eligible: (A) mathematical formulas that are not part of an invention; (B) processes that a human could practically perform that are “substantially economic, financial, business, social, cultural, or artistic” even if the process itself requires a machine; (C)  mental processes performed solely in the human mind or processes that occur in nature wholly independent and prior to any human activity; (D) unmodified human genes (“as that gene exists in the human body”); and (E) unmodified natural material (“as that material exists in nature”)

3. Claims as a Whole: When determining eligibility, the tribunal must consider the claims as a whole without discounting or disregarding any claim element and without regard to its novelty or conventionality.

Read the proposal here.