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Subject Matter Eligibility - Reform Coming Soon?

In several previous blog posts, we discussed the USPTO’s revised guidance for determining subject matter eligibility under 35 U.S.C. § 101, including a review of potential inconsistencies between the USPTO guidance and Mayo and a recent Federal Circuit decision, which did not defer to the USPTO guidance. We ended on a hopeful note that some combination of the courts, agencies, and lawmakers can provide clarity for affected industries.

A bipartisan group of congressmen in the Senate and the House recently released a framework for Section 101 patent reform. Among other proposed changes, the framework seeks to define a “closed list” of exclusive categories of statutory subject matter that should not be eligible, including, for example, fundamental scientific principles, products existing solely and exclusively in nature, and mental activities. The framework also proposes creating a “practical application test” to ensure narrow construction of the statutorily ineligible subject matter as well as ensuring that reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.

According to a press release by the office of Senator Thom Tillis, the “U.S. patent law discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine.”1 It is encouraging that Congress is aware of the issues surrounding subject matter eligibility and is actively seeking feedback for reform.

The framework has been released for public comments. Interested parties may send their feedback to

1 Press release dated April 17, 2019.

Please see the framework here.