Policymakers at the U.S. Patent and Trademark Office are working to bring greater clarity to one of the most confusing areas of patent law: Section 101, the provision that determines which inventions are eligible for patent protection. These efforts are welcome and important: A series of recent Supreme Court decisions expanded vague judicial exceptions to patent eligibility, leaving inventors and investors struggling to determine which inventions qualify for protection and plunging many high-tech industries into uncertainty.
Yet while administrative guidance can help examiners apply the law more consistently, it cannot permanently resolve the uncertainty created by court precedent. That’s why lawmakers from both parties are advancing the Patent Eligibility Restoration Act, or PERA, which would clarify Section 101 by replacing today’s unpredictable, court-created framework with clearer statutory rules. PERA would restore eligibility for practical, applied inventions in critical fields while preserving key limits on patenting mere ideas, natural phenomena, and basic scientific principles.
Unfortunately, patent critics continue to make unfounded claims about this bill, jeopardizing the prospect of Section 101 reform and the future of U.S. innovation. Below, we clarify some key misconceptions about Section 101 and the Patent Eligibility Restoration Act:
| Claim: The current Section 101 framework is working fine. |
| In Reality: The current framework has created significant uncertainty for inventors, investors, patent examiners, and courts. It declares certain types of concepts — including “abstract ideas,” “laws of nature,” and “natural phenomena” — ineligible for patenting, but doesn’t clearly define which inventions fall into these broad categories. In many cases, courts have swept clearly innovative advances in software, medical diagnostics, and other high-tech fields into these categories.
That uncertainty and inconsistency have made it difficult to predict whether even important technological advances will receive patent protection, disincentivizing investors from funding research and development in critical high-tech areas. After the Supreme Court’s 2012 decision in Mayo v. Prometheus, for instance, lower courts applied Section 101 to invalidate patents on certain medical diagnostic inventions. Studies have found that investment in disease diagnostics was nearly $9.3 billion lower in the four years after Mayo than it would have been without the decision. This withheld investment has not only limited patients’ options but also undermined U.S. competitiveness in a growing technology field. Federal Circuit judges have repeatedly recognized the problem. In cases such as Athena Diagnostics v. Mayo Collaborative Services and American Axle v. Neapco, judges have expressed frustration with the fact that Supreme Court precedent has forced them to disallow innovative patents that meet all other legal criteria. Federal Circuit judges have also warned that the lack of clarity surrounding patent eligibility has sparked disagreement among judges, produced inconsistent outcomes, and prevented courts from applying the law evenly across cases and companies. If the expert court responsible for patent law cannot apply the framework predictably, the framework is not working. |
| Claim: Policymakers should leave Section 101 reform to the courts, rather than passing PERA. |
| In Reality: Section 101 is a statute, not part of the Constitution — which means Congress has both the authority and responsibility to clarify it when judicial interpretations create confusion or unintended consequences. While USPTO guidance may help resolve uncertainty, it cannot resolve the underlying problem that valid and deserving inventions are being denied patent protection by overbroad court precedents. This is precisely why Federal Circuit judges have called for congressional intervention. Moreover, the Supreme Court has repeatedly declined to revisit the issue, including in high-profile eligibility cases such as Athena and American Axle. That leaves Congress as the only institution capable of delivering a durable fix.
Fortunately, PERA is a tailored solution that would directly address the problems facing innovators. The bill would restore eligibility for meritorious technological inventions while maintaining guardrails — in clearer language — against patenting mere ideas, basic scientific principles, and things that exist in nature. It would also leave unchanged the rest of patent law’s requirements, including novelty, nonobviousness, usefulness, and adequate disclosure. Importantly, PERA is a bipartisan effort and has already undergone rounds of negotiation and revision to alleviate concerns that it could inadvertently enable inventors to patent concepts that should not be patented. PERA is the permanent, measured solution that inventors and policymakers alike have been demanding. It has a crucial role to play in promoting American competitiveness: without congressional action to reform Section 101, innovators will continue to face uncertainty and struggle to attract investment in fields such as artificial intelligence and medical diagnostics, where the United States should be leading the world. Important discoveries could remain trapped in labs, while the United States could cede leadership to other countries that embrace stronger patent protections for emerging technologies. If policymakers want to restore clarity and fairness for American inventors navigating patent eligibility issues, passing the Patent Eligibility Restoration Act is the strongest and simplest way to achieve that goal. |