Tillis bill would replace the judicial exceptions with a statutory list and make machine-embodied processes eligible

2022-08-02Legislation

Patent Eligibility Restoration Act of 2022, S. 4734, 117th Cong., introduced August 2, 2022 by Senator Thom Tillis and referred to the Committee on the Judiciary

Senator Tillis introduced the Patent Eligibility Restoration Act of 2022, which would rewrite Section 101 of Title 35 of the United States Code. New subsection (a) would provide that whoever invents or discovers any useful process, machine, manufacture or composition of matter may obtain a patent "subject only to the exclusions in subsection (b)." Subsection (b)(1) would exclude, "if claimed as such," a mathematical formula apart from a useful invention; a process that "is a non-technological economic, financial, business, social, cultural, or artistic process," "is a mental process performed solely in the human mind," or "occurs in nature wholly independent of, and prior to, any human activity"; and unmodified human genes and natural materials. Subsection (b)(2)(A) would make an otherwise excluded non-technological process eligible "if that process is embodied in a machine or manufacture, unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform." Subsection (c) would require eligibility to be decided by considering the claimed invention "as a whole and without discounting or disregarding any claim element," and without regard to the manner of invention, whether an element is "known, conventional, routine, or naturally occurring," the state of the art, or any consideration in sections 102, 103 or 112. Senator Tillis is the only sponsor at introduction.

What it changesUnder the bill's text a machine learning process is eligible unless it is a non-technological economic, financial, business, social, cultural or artistic process or a mental process performed solely in the human mind, and even an excluded non-technological process becomes eligible when embodied in a machine that does more than store and execute its steps. The drafting consequence is that a claim set which already recites the computing machinery as an integrated part of the method, the processor running the model and the memory holding the weights, is positioned for either regime: under current law that machinery is the technological environment an examiner discounts, but under the bill it is the integration that saves the claim. Keep system claims alongside method claims, and write the integration into both. The bill would also end the inquiry into whether an element is conventional; until Congress acts that record still has to be built during prosecution. One senator, one chamber, late in a Congress: a signal, not a schedule.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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