Retired Federal Circuit Judge Predicts "Imminent" Congressional Action to Address Patent Ineligibility Plague

On May 15, 2023, despite recommendations from the U.S. Solicitor General for the Supreme Court to grant petitions to review two cases concerning the concept of patent ineligibility under 35 U.S.C. § 101, the Court issued denials of both petitions. 

Neither refusal should come as a surprise. 

As I surmised in a July 2022 post following the Court's refusal to review a § 101 case that clearly merited such review: "The Court's refusal to hear the American Axle decision now leaves little hope that the Court will ever revisit the subject of patent eligibility in the near future."

Although the Court's latest refusals justifiably instill continued frustration among inventors and members of the Patent Bar, these decisions may provide additional ammunition to proponents of legislative action to address this uncertain area of patent law. Last September, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) co-sponsored the Patent Eligibility Restoration Act of 2022 (PERA) (S.4734), which proposes to significantly amend Section 101 and to legislatively overrule confusing Supreme Court decisions.

As aptly expressed in a November 2022 Harvard University post: "Given the complex and uncertain landscape of patent eligibility in the United States, Sen. Tillis’ bill could benefit business interests and, if its proponents are correct, increase innovation in key industries like biotechnology."

Although PERA produces "a less-than-perfect Section 101," it represents a significant first step toward ultimately attaining legislative clarity to help fix the vagueness plaguing patent eligibility law. Judge Michel's views (block-quoted below) expressing an expectation that PERA will be fully introduced to Congress "imminently" certainly provides cause for optimism.