[Congressional Bills 118th Congress]
[From the U.S. Government Publishing Office]
[S. 2140 Introduced in Senate (IS)]

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118th CONGRESS
  1st Session
                                S. 2140

 To amend title 35, United States Code, to address matters relating to 
       patent subject matter eligibility, and for other purposes.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             June 22, 2023

 Mr. Tillis (for himself and Mr. Coons) introduced the following bill; 
  which was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To amend title 35, United States Code, to address matters relating to 
       patent subject matter eligibility, and for other purposes.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Eligibility Restoration Act 
of 2023''.

SEC. 2. FINDINGS.

    Congress finds the following:
            (1) As of the day before the date of enactment of this Act, 
        patent eligibility jurisprudence interpreting section 101 of 
        title 35, United States Code, requires significant modification 
        and clarification.
            (2) For many years after the original enactment of section 
        101 of title 35, United States Code, the Supreme Court of the 
        United States and other courts created judicial exceptions to 
        the wording of that section, thereby rendering an increasing 
        number of inventions ineligible for patent protection.
            (3) Efforts by judges of district courts and courts of 
        appeals of the United States to apply the exceptions described 
        in paragraph (2) to specific circumstances have led to 
        extensive confusion and a lack of consistency--
                    (A) throughout the judicial branch of the Federal 
                Government and Federal agencies; and
                    (B) among patent practitioners.
            (4) Many judges of the United States Court of Appeals for 
        the Federal Circuit and of various district courts of the 
        United States have explicitly expressed the need for more 
        guidance with respect to the meaning of section 101 of title 
        35, United States Code, and many patent owners, and persons 
        that engage with patent owners, complain that the 
        interpretation of that section is extremely confusing and 
        difficult to discern and apply with any confidence.
            (5) Under this Act, and the amendments made by this Act, 
        the state of the law shall be as follows:
                    (A) All judicial exceptions to patent eligibility 
                are eliminated.
                    (B) Any invention or discovery that can be claimed 
                as a useful process, machine, manufacture, or 
                composition of matter, or any useful improvement 
                thereof, is eligible for patent protection, except as 
                explicitly provided in section 101 of title 35, United 
                States Code, as amended by this Act, as described in 
                subparagraphs (D) and (E) of this paragraph.
                    (C) Sections 102, 103, and 112 of title 35, United 
                States Code, will continue to prescribe the 
                requirements for obtaining a patent, but no such 
                requirement will be used in determining patent 
                eligibility.
                    (D) The following inventions shall not be eligible 
                for patent protection:
                            (i) A mathematical formula that is not part 
                        of an invention that is in a category described 
                        in subparagraph (B).
                            (ii) A mental process performed solely in 
                        the mind of a human being.
                            (iii) An unmodified human gene, as that 
                        gene exists in the human body.
                            (iv) An unmodified natural material, as 
                        that material exists in nature.
                            (v) A process that is substantially 
                        economic, financial, business, social, 
                        cultural, or artistic.
                    (E) Under the exception described in subparagraph 
                (D)(v)--
                            (i) process claims drawn solely to the 
                        steps undertaken by human beings in methods of 
                        doing business, performing dance moves, 
                        offering marriage proposals, and the like shall 
                        not be eligible for patent coverage, and adding 
                        a non-essential reference to a computer by 
                        merely stating, for example, ``do it on a 
                        computer'' shall not establish such 
                        eligibility; and
                            (ii) any process that cannot be practically 
                        performed without the use of a machine 
                        (including a computer) or manufacture shall be 
                        eligible for patent coverage.

SEC. 3. PATENT ELIGIBILITY.

    (a) In General.--Chapter 10 of title 35, United States Code, is 
amended--
            (1) in section 100--
                    (A) in subsection (b), 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''; and
                    (B) by adding at the end the following:
    ``(k) 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.''; and
            (2) by amending section 101 to read as follows:
``Sec. 101. Patent eligibility
    ``(a) In General.--Whoever invents or discovers any useful process, 
machine, manufacture, or composition of matter, or any useful 
improvement thereof, may obtain a patent therefor, subject only to the 
exclusions in subsection (b) and to the further conditions and 
requirements of this title.
    ``(b) Eligibility Exclusions.--
            ``(1) In general.--Subject to paragraph (2), a person may 
        not obtain a patent for any of the following, if claimed as 
        such:
                    ``(A) A mathematical formula that is not part of a 
                claimed invention in a category described in subsection 
                (a).
                    ``(B)(i) Subject to clause (ii), a process that is 
                substantially economic, financial, business, social, 
                cultural, or artistic, even though not less than 1 step 
                in the process refers to a machine or manufacture.
                    ``(ii) The process described in clause (i) shall 
                not be excluded from eligibility for a patent if the 
                process cannot practically be performed without the use 
                of a machine or manufacture.
                    ``(C) A process that--
                            ``(i) is a mental process performed solely 
                        in the human mind; or
                            ``(ii) occurs in nature wholly independent 
                        of, and prior to, any human activity.
                    ``(D) An unmodified human gene, as that gene exists 
                in the human body.
                    ``(E) An unmodified natural material, as that 
                material exists in nature.
            ``(2) Conditions.--For the purposes of subparagraphs (D) 
        and (E) of paragraph (1), a human gene or natural material 
        shall not be considered to be unmodified if the gene or 
        material, as applicable, is--
                    ``(A) isolated, purified, enriched, or otherwise 
                altered by human activity; or
                    ``(B) otherwise employed in a useful invention or 
                discovery.
    ``(c) Eligibility.--
            ``(1) In general.--In determining whether, under this 
        section, a claimed invention is eligible for a patent, 
        eligibility shall be determined--
                    ``(A) by considering the claimed invention as a 
                whole and without discounting or disregarding any claim 
                element; and
                    ``(B) without regard to--
                            ``(i) the manner in which the claimed 
                        invention was made;
                            ``(ii) whether a claim element is known, 
                        conventional, routine, or naturally occurring;
                            ``(iii) the state of the applicable art, as 
                        of the date on which the claimed invention is 
                        invented; or
                            ``(iv) any other consideration in section 
                        102, 103, or 112.
            ``(2) Infringement action.--
                    ``(A) In general.--In an action brought for 
                infringement under this title, the court, at any time, 
                may determine whether an invention or discovery that is 
                a subject of the action is eligible for a patent under 
                this section, including on motion of a party when there 
                are no genuine issues of material fact.
                    ``(B) Limited discovery.--With respect to a 
                determination described in subparagraph (A), the court 
                may consider limited discovery relevant only to the 
                eligibility described in that subparagraph before 
                ruling on a motion described in that subparagraph.''.
    (b) Technical and Conforming Amendment.--The table of sections for 
chapter 10 of title 35, United States Code, is amended by striking the 
item relating to section 101 and inserting the following:

``101. Patent eligibility.''.
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