CALL US: 206.533.3854
CALL US  206.533.3854
Public Domain, https://commons.wikimedia.org/w/index.php?curid=10532805

Congress to Expand Patent Eligibility for Computer-Implemented Inventions?

Bill would remove “new”
From patent act language;
Witnesses object

Earlier this year, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) of the Senate Judiciary Committee, along with three members of the House of Representatives, released a draft patent reform bill focusing on 35 U.S.C. § 101.

This core section of the law defines what makes something patentable, and currently states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.


(Emphasis added.)

The proposed new version of the law would remove the word “new.”


The word “new” relates to traditional patent requirements of novelty and non-obviousness, and shifts the patentability focus to the utility of the claimed invention.

Hearings on the proposed change were held in June.

Many witnesses spoke against loosening patent eligibility. For example, a witness from the Electronic Frontier Foundation testified:

Rewriting Section 101 to remove long-standing protections may benefit big businesses, patent trolls, and incumbents with massive patent portfolios, but it will disproportionately imperil startups, independent developers, customers, and end users.


The change in the law would reverse recent US Supreme Court precedents restricting subject matter eligibility.

In addition, the bill would direct the Patent Office to construe section 101 in favor of eligibility.

Also, judicial exceptions to subject-matter eligibility – such as “abstract ideas,” “laws of nature,” or “natural phenomena,” would not be recognized. Even more radically, cases that established or interpreted such exceptions would be abrogated by the statute.

After years in which the scope of patent protection narrowed – especially with respect to computer-aided inventions and business methods – it’s now widening again.

As we discussed earlier this year, the Patent Office updated its examination guidelines yet again in January in recognition that trying distinguish between “abstract ideas” (that aren’t patentable) and non-abstract inventions (that are patentable) has proved problematic.

Related Articles

Is Elon Musk Reading Your Patent Application?

DOGE now has access
To US government docs --
Including patents?
Read More

Copyright Office Says AI Prompts Don’t Confer Authorship

The US Copyright Office has released part two of its Artificial Intelligence (AI) Report. Part one was published in July of 2024 and focused on ...
Read More

Patent Board Rejects Amazon Listing as Prior Art

The Patent Trial and Appeal Board (PTAB or Board) has found that an Amazon.com product listing doesn’t qualify as “prior art” in an inter partes ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

call us  206.533.3854