PERA’s improved language immediately ends uncertainty - even with litigation
Andrei Iancu, 24 – Partner, Sullivan & Cromwell; former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Responses to Questions from Senator Alex Padilla, before the Subcommittee on Intellectual Property in the Senate Judiciary Committee, “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System” 1/23, https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_qfr_responses_-_iancu.pdf //DH
RESPONSE TO QUESTION 5: Once Congress finalizes the contours of PERA and passes it into law, it will bring an immediate amount of certainty to Section 101. It will do this by eliminating the judicial exceptions, which have proven to be unworkable over the past decade, and replacing them with a clear articulation of what is a patent-eligible invention and what is not. This structure of defined matter that is not an invention, such as “mathematical formulas,” is much more amenable to judicial interpretation than amorphous terms like “abstract idea.” While there will always be litigation at the outer edge of any term’s meaning, the language of PERA starts off by being much more concrete. Importantly, this will not only help examiners and judges, but it will help inventors who do not have law degrees or experience in case law research understand whether they are operating within a patent-eligible field just by reading the statute. Any lay person now just reading the statute would probably not even realize that significant judicial exception exists to the plain text of Section 101.