Returning patent eligibility decisions to Congress and removing it from courts is vital to certainty and predictability

As Chairman Coons and Ranking Member Tillis recognized in introducing PERA, “all 12 judges of the United States Court of Appeals for the Federal Circuit have lamented the state of the law” when it comes to patent eligibility under Section 101.1 The current state of the law is the result of many court decisions over the decades trying to determine whether modern technologies—such as computer software, DNA processing, and many others—fit into the categories for a patent defined in 1793, or whether they are subject to certain exceptions courts have imposed since then. The patchwork of decisions over time, struggling to keep up with fast-changing technologies, has created significant confusion and uncertainty as to what is in and what is outside the bounds of the statute. These court decisions also have resulted in certain de facto rules—such that diagnostic techniques, for example, are generally not eligible for a patent in the United States—that Congress has never considered, debated, or passed into law. If the United States Government is not to issue patents for certain categories of inventions that would otherwise be part of the categories outlined in Section 101, then it is up to Congress to make that rule. In other words, Congress defined the categories of patent subject matter; if there are to be exceptions to those categories, they must likewise come from Congress.

The current state of the law has caused profound uncertainty amongst inventors, investors, and patent-law practitioners alike. In turn, this uncertainty and confusion has hurt American innovation, competition, and the economy. It also has threatened the Constitutional right to patent protection—a right that James Madison and the Founders saw as vital to the economic strength and growth of our nation.

The current state of the law has even sown confusion amongst the expert ranks of the hardworking patent examiners at the United States Patent and Trademark Office (“USPTO”). To address this issue, the USPTO promulgated guidelines in 2019 that synthesized the relevant caselaw and provided examiners and applicants a significantly improved framework for analyzing eligibility under Section 101. This has dramatically improved the analysis at the USPTO. For example, a study by the USPTO’s Chief Economist has shown that “uncertainty about determinations of patent subject matter eligibility in the first action stage of patent examination for the relevant technologies decreased by 44% over the first year following publication of the 2019 [Revised Patent Subject Matter Eligibility Guidance] compared to the previous year.”2

Courts, however, are independent and not bound by administrative guidelines. As a result, Congressional action is needed to determine affirmatively which categories of inventions should be deemed as statutorily unpatentable. Otherwise, as Justice Clarence Thomas warned, “exclusionary principle[s]” espoused by the Judiciary about Section 101 risk “swallow[ing] all of patent law.”3

Fortunately, PERA provides the legislative vehicle for the United States to correct the state of the law. PERA expressly outlines certain categories that are not considered to be inventions eligible for a patent, and further indicates that courts are not to create any exceptions that are not in the statute. Once the categories—after debate and adjustment as appropriate—are settled on and passed into law, PERA will bring immediate certainty to Section 101. And it will prevent future uncertainty by “eliminat[ing]” “[a]ll judicial exceptions to patentability” and returning patent-eligibility decision making to Congress and legislative debate.