Patent Eligibility Restoration Act would make a process eligible when it cannot practically be performed without a machine

2023-06-22Legislation

Patent Eligibility Restoration Act of 2023, S. 2140, 118th Cong., introduced June 22, 2023 by Senators Tillis and Coons and referred to the Committee on the Judiciary

Senators Tillis and Coons introduced S. 2140, the Patent Eligibility Restoration Act of 2023, which would rewrite Section 101 of Title 35 of the United States Code to replace the judicial exceptions with a closed statutory list. Subsection (b)(1) excludes, when claimed as such, a mathematical formula that is not part of a claimed process, machine, manufacture or composition of matter; a process that "is substantially economic, financial, business, social, cultural, or artistic, even though not less than 1 step in the process refers to a machine or manufacture"; a process that "is a mental process performed solely in the human mind" or that occurs in nature independent of human activity; an unmodified human gene; and an unmodified natural material. Subsection (b)(1)(B)(ii) provides that an economic, business or similar process "shall not be excluded from eligibility for a patent if the process cannot practically be performed without the use of a machine or manufacture." Subsection (c)(1) directs that eligibility be determined on the claimed invention as a whole, without discounting any element, and "without regard to" how the invention was made, whether an element is known, conventional, routine or naturally occurring, the state of the art, or Sections 102, 103 and 112. Subsection (c)(2) lets a court decide eligibility at any time, with discovery limited to that question.

What it changesThe bill's machine-dependence exception describes most machine learning methods: training a model, running inference through a tensor pipeline or routing a request through an index cannot practically be performed without a computer, and under the bill that fact alone would answer the eligibility question for a process that a court today would dismiss as economic or social. Drafters should preserve claims in that form now, with an independent claim that recites the computational mechanism in terms that make performance without a machine impractical, so the claim is ready if the bill is enacted and defensible under Alice if it is not. The subsection (c)(1) direction to ignore conventionality would end the step-two inquiry that defeats most software claims today, but the bill is a first-session introduction that has only been referred to committee; budget for prosecution under current law and treat the bill as an option, not a plan.

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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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