Congress Moves To Expand Patentable Subject Matter & Contract Functional Claim Scope

Author:Mr Scott A. McKeown, Kyle Tsui and Andrew Sutton
Profession:Ropes & Gray LLP

On May 22, 2019, a bipartisan group from the House and Senate released a draft framework reforming Sections 101 and 112 of the Patent Act (here).

The draft framework is a proposal responding to the confusing state of judge-made exceptions to patentable subject matter under Section 101. The proposal mandates that patent claims be construed in favor of eligibility. More importantly, the draft framework would statutorily abrogate the judicially created exceptions to patent eligibility, specifically identifying and abrogating the abstract idea, laws of nature and natural phenomena exceptions. These exceptions to patent eligibility became far more prominent after the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014).

The proposal is the result of months of negotiations with major patent stakeholders, most notably the Bio/Pharma and Tech industries. While Bio/Pharma companies would greatly benefit from broadening eligibility requirements to more readily include technologies such as medical diagnostics, the Tech community has largely opposed the effort as it often relies on exceptions to patent eligibility to defeat infringement claims. To bridge this divide, the draft framework presents a revision to Section 112 that will impact the scope of asserted patent claims.

Recent litigation has centered on the applicability of Section 112(f) tononce terms (i.e...

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