New Senate Bills Address Patent Eligibility, Operation of Patent Trial and Appeal Board

A pair of bipartisan bills have been introduced in the Senate that address patent law. Senators Chris Coons (D-DE) and Thom Tillis (R-NC), the chair and ranking member on the Senate’s Intellectual Property Subcommittee, have introduced the Patent Eligibility Restoration Act of 2023 which attempts to clarify which inventions should be granted patent protection. In addition, Senators Coons and Tillis, joined by Senators Dick Durbin (D-IL) and Mazie Hirono (D-HI) have introduced the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL Act) which attempts to make changes to the Patent Trial and Appeal Board.

Patent Eligibility

The Patent Eligibility Restoration Act of 2023 seeks to amend Section 101 of the Patent Statutes which pertains to patent eligibility. The Act aims to eliminate all of the judicial exceptions to patent eligibility that have been promulgated by the Supreme Court and the Federal Circuit Court of Appeals and expressly specify the inventions that shall not be eligible for patent protection.

The proposed amendment provides that whoever invents or discovers a useful process, machine, manufacture, or composition of matter or an improvement to them may obtain a patent subject only to specified exclusions. Those exclusions are:

A mathematical formula that is not part of a claimed invention in one of the specified categories listed above.
A process that is substantially economic, financial, business, social, cultural, or artistic, even if a step in the process refers to a machine or manufacture, unless the process cannot practically be performed without the use of a machine or manufacture (in other words, patent protection will not be provided by performing steps of a process undertaken by human beings and adding a nonessential reference to a computer).
A process that is a mental process performed solely in the mind or occurs in nature wholly independent of and prior to any human activity.
An unmodified human gene, as that gene exists in the human body.
An unmodified natural material, as that material exists in nature.

The proposed amendment further provides that a human gene or natural material shall not be considered unmodified if it is isolated, purified, enriched, or otherwise altered by human activity, or is otherwise employed in a useful invention or discovery.

PREVAIL Act

The PREVAIL Act seeks to make changes to the practice before the Patent Trial and Appeal Board (PTAB) as well as changes to the operations of the Patent Office in general.

The PREVAIL Act will establish a new Patent Office revolving fund in the U.S. Treasury and eliminate fee diversion, allowing the Patent Office to fully utilize the fee revenue it receives from users of its services.

The PREVAIL Act directs the Patent Office to establish a code of conduct for the PTAB. The Act also aims to provide greater transparency in changes to PTAB panels and ensure that PTAB panels make decisions independent of political influence. The Act also provides that a PTAB judge who decides to institute an action will not be part of the PTAB panel that decides the outcome of that proceeding.

The PREVAIL Act also makes significant changes to the Inter Partes Review (IPR) and Post-Grant Review (PGR) proceedings. Among the changes are:

The Act adopts the same standing requirement for IPR proceedings as applies in federal court challenges to a patent. However, in order to encourage early challenges to the validity of patents, there will be no standing requirement for PGR proceedings.
The Act will require patent challengers to choose between either an IPR or a federal court challenge to the patent’s validity based on prior publications, although a challenger can proceed with a federal court challenge to validity on other grounds.
The Act will provide a more robust amendment process allowing patent owners to receive input from the PTAB when they file motions to amend and rely on that input in revising their motions.
The Act will standardize the burden of proof by adopting the federal court clear and convincing standard for patent challengers, although the patent owner would bear a preponderance of the evidence standard as to amended claims.

If you need assistance in navigating and determining how these legislative bills and Congressional action may impact your company, Buchanan’s experienced IP attorneys and Government Relations professionals are here to help. Please reach out to Michael Dever or Michael Strazzella with any questions.