Specifically, the proposal addresses the question of ‘patent eligibility’, meaning what sort of products or processes can be patented in general, irrespective of more specific criteria such as novelty and non-obviousness. For example, a machine and a chemical compound are generally patentable, whereas a piece of music is generally not patentable, even if it is very innovatively composed.

Current US patent law leaves considerable room for discussion regarding the limits of patent eligibility. As a result, over the years, US courts have formulated various restrictions on patent eligibility, largely on a case-by-case basis. According to critics, this so-called case law has made it increasingly difficult to establish whether a specific invention is patentable or not. Moreover, the resulting restrictions suppress innovation in important areas of technology.

The proposal now before the US senate is entitled ‘Patent Eligibility Restoration Act’. As its name suggests, the aim is to restore patent eligibility for some types of inventions that today are deemed unpatentable in view of case law from the courts.

For example, according to US case law, patents cannot be granted for “processes that occur in nature independent of, and prior to, any human activity”. In practice, this can make it difficult to obtain a patent for detecting a genetic disorder by analyzing a patient’s DNA sequence. As another example, current case law indicates that “mathematical formulas” cannot be the subject of a patent. In practice, this can make it difficult to obtain a patent for the use of machine learning algorithms to perform technical tasks.

According to the Patent Eligibility Restoration Act, patent eligibility is to be determined “by considering the claimed invention as a whole and without discounting or disregarding any claim element”. This change in federal law would essentially overrule a large part of the current case law, and means that more types of technology will be patentable in the United States.

As the proposal progresses through the US legislative process, innovators in these and other fields may be more and more encouraged to leverage the US patent system to their advantage. Together with our network of experienced US patent attorneys, V.O. continues to guide and support these innovators in their endeavors. For example, V.O. can monitor your portfolio and assist in developing strategies to benefit from these new legal boundaries in the United States.