Senator Introduces Bill to Overrule Supreme Court Patent Decisions

The office of Senator Thom Tillis (R-NC), the Ranking Member of the Senate Intellectual Property Subcommittee, has released a first draft of the Patent Eligibility Restoration Act, which would overrule the US Supreme Court’s patent eligibility decisions in Association for Molecular Pathology v. Myriad Genetics (2013) and Mayo Collaborative Services v. Prometheus Laboratories (2012). According to Senator Tillis,

Unfortunately, due to a series of Supreme Court decisions, patent eligibility law in the United States has become confused, constricted, and unclear in recent years. This has led to inconsistent case decisions, uncertainty in innovation and investment communities, and unpredictable business outcomes. This has resulted in a wide range of well-documented negative impacts.

As the National Law Review explains,

In Myriad, the Supreme Court decided that a human gene is a product of nature that is “not patent eligible merely because it has been isolated”, with the justices invalidating Myriad Genetics’ patents on an isolated gene associated with a higher risk of breast cancer. In its wake, Myriad had a domino effect on patent subject matter eligibility that has continued in the years since and culminated in June of this year when the Supreme Court refused certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC, an appeal to a Federal circuit decision that a drive shaft is not patent eligible because the operation of the drive shaft fundamentally relies on Hooke’s law.

Under the bill, among other changes, Chapter 10 of title 35, section 100 of the United States Code would be amended by striking ‘‘includes a new use of a known process’’ and inserting ‘‘includes a use, application, or method of manufacture of a known or naturally-occurring process.’’ The statute, if passes, would deny patent protection for the following:

(A) A mathematical formula, apart from a useful invention or discovery. (B) A process that— (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity. (C) An unmodified human gene, as that gene exists in the human body. (D) An unmodified natural material, as that material exists in nature.

The bill also modified and adds the following definitions to the Patent Act:

(b) [Amended] The term “process” means process, art or method, and includes a new use, application, or method of manufacture of a known or naturally occurring process, machine, manufacture, composition of matter, or material. (k) [New] The term ‘useful’ means, with respect to an invention or discovery, that the invention or discovery has a specific and practical utility from the perspective of a person of ordinary skill in the art to which the invention or discovery pertains.

Under the bill, as the National Review explains,

any discovered human gene would still not be patent eligible if unmodified. However, the bill states that genes or natural material that are “purified, enriched, or otherwise altered by human activity, or otherwise employed in a useful invention or discovery,” would not be considered unmodified, and would be eligible for patents. This would directly overrule Myriad and expand the subject matter that is eligible for patent protection, and could put in doubt the many cases since Myriad’s 2013 decision that were directly based on its ruling.