Make It Make Sense: How Congress Can (and Should) Clarify Patent-Eligible Subject Matter
Jay Eischen | 26 Vand. J. Ent. & Tech. L. 803 (2024)
The eligibility of inventions for patent protection under 35 U.S.C. Section 101 was altered substantially by the Supreme Court’s decisions in Alice v. CLS Bank and Mayo v. Prometheus. These decisions and their progeny have expanded application of the implicit “judicial exceptions” to patent eligibility for laws of nature, natural phenomena, and abstract ideas. The resulting uncertainty has proven untenable for many stakeholders in the patent system, impeding innovation. With the Supreme Court steadfastly declining to provide clarity by granting certiorari in recent cases raising Section 101 questions, many are calling for Congress to act.
While policy debate around Section 101 reform is alive and well, much of the scholarship on the issue focuses on the principles that ought to guide reform. This Note seeks to further the conversation by comparing justifications for subject matter restrictions against specific statutory language. Using the Patent Eligibility Restoration Act of 2023 (PERA) as a case study, this Note compares PERA with the theory and recommendations provided by patent law scholars and finds it is strikingly consistent with utilitarian and other normative justifications for subject matter restrictions. This reformulation of Section 101 may alleviate much of the uncertainty harmful to stakeholders in the patent system. Recognizing imperfections in PERA, this Note concludes by proposing two amendments that would provide greater clarity and restrict eligibility for patents that are unlikely to provide societal value.