Monday, May 27, 2019

Congress - Draft Bill for Revising 35 U.S.C. § 101, Patent Eligibility and 35 U.S.C. § 112(f)

The Congressional Senate and House Intellectual Property Subcommittees released a draft bill for revisions to 35 U.S.C. § 101 and 35 U.S.C. § 112(f) "to solicit feedback" and discuss in hearings.

The draft bill for revised 35 U.S.C. § 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 100 (Definitions):

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

The draft bill for revised 35 U.S.C. § 112(f):

(f) Functional Claim Elements Element in Claim for a Combination— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The proposal also suggests further language be added to construe the statute “in favor of eligibility” and to expressly eliminate the non-statutory exceptions to eligibility.

For details - Senator Tillis et al. Press Release.

If Congress passes this proposed revision to 35 U.S.C. § 101, it may prove favorable to the current problem of novelty issues being analyzed without reference to specific prior art in determining patent eligibility, while the proposed revision to 35 U.S.C. § 112 may prove favorable to defendants seeking to significantly narrow claims by invoking Section 112 treatment whenever the claim recites a function without reference to structure.

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