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Senate Conducts Hearing on Legislative Proposal Regarding Patent Eligibility

Senate Subcommittee Examines Patent Eligibility Reform with Focus on PERA

In a bid to address the complexity surrounding patent eligibility, the Senate Judiciary Committee’s Subcommittee on Intellectual Property conducted a hearing on January 23, 2024, to discuss the Patent Eligibility Restoration Act (PERA). Designed to unravel the uncertainties stemming from the 2014 Supreme Court decision in Alice Corp. Pty. v. CLS Bank Int’l, PERA is the latest endeavor in patent eligibility reform under 35 USC § 101, spearheaded by Senators Thom Tillis (R-NC) and Chris Coons (D-DE).

PERA’s objective is to eliminate all judicial exceptions to patent eligibility, replacing them with clearly defined categories of unpatentable inventions. These include mathematical formulas, substantially economic or business processes, mental or purely natural processes, unmodified human genes, and unmodified natural materials.

The hearing featured eight witnesses split into two panels. The first panel included:

Andrei Iancu, former US Patent & Trademark Office (PTO) director
Richard Blaylock, testifying on behalf of Invitae Corporation
Courtenay Brinckerhoff, partner at Foley & Lardner
Phil Johnson, steering committee chair at the Coalition for 21st Century Patent Reform.
The second panel included:

The Honorable David Kappos, former PTO director
Adam Mossoff, professor at the Antonin Scalia Law School
Mark Deem, operating partner of Lightstone Ventures
David Jones, executive director of the High-Tech Inventors Alliance.
Notably, the testimony leaned in favor of reform, emphasizing legislative action due to perceived inaction by other stakeholders. Witnesses highlighted the need for clarity on § 101, given the Supreme Court’s reluctance to review over 100 certiorari petitions.

During the hearing, concerns were raised about the potential impact of PERA on patent eligibility for new uses of natural phenomena. While Blaylock argued that this could stifle innovation, Iancu contended that all human invention involves the manipulation of nature and should be eligible for a patent. Brinckerhoff emphasized the international competitiveness maintained by PERA, aligning eligibility with other countries.

The second panel delved into concerns about § 101 uncertainties affecting investments in industries like artificial intelligence and medical diagnostics. Despite varying perspectives, there was consensus on the pressing need for reform.

In concluding statements, Senator Coons reinforced the importance of PERA in restoring clarity, reliability, and predictability to the US patent system. The hearing underscored the unworkability of the current patent eligibility test and its adverse impact on innovation and competitiveness. If enacted, PERA would usher in a significant overhaul to § 101 and patent eligibility regulations.

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