Draft Bill to Reform 35 U.S.C. 101

It’s been a fruitful year for the US which saw a series of reforms introduced to restructure the section of the Patent Act, especially 35 U.S.C. 101 & 102. One such step is the introduction of a draft bill text which proposes to abrogate the requirement of judicial exception scrutiny, as mentioned in 35 U.S.C. 101, along with a few other changes to the legislative language of this section.

The draft text adds sub-section 100 (k) to describe the term “useful” as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.” This goes onto establish the Diamond v Chakrabarty judgment. However, this can also be threatening for inventions wherein human intervention is not required, as in the automation system, and maybe dampening the growth of such processes.

Further, 35 U.S.C. 101 was given a simplified meaning by replacing the phrase “new and useful” with just “useful” thereby eliminating the requirement of the invention to be both novel and useful in order to be patent-eligible. Also, the eligibility under this section is now to be determined by considering the claimed invention as a whole together with all the mentioned claim limitations.

Moreover, Section 112 (f) was also restructured to take care of generic way of expressing an element in a claim by its function and not limiting to a particular structure (for instance a writing device is mentioned in a claim, which can be a pen, pencil, marker etc.), by limiting the scope of these to cover the corresponding structure as described in the specification of the patent application and its equivalents.

However, the major revamp of this bill is the abrogation of “judicial exceptions” which is a factor in determining patent eligibility of an invention. According to this, the subject matter eligibility of an invention will not be determined by judicially created exceptions including abstract ideas, laws of nature or natural phenomena, thereby keeping the exclusions limited only to fundamental scientific principles, mathematical formula, mental activities, or the like, as mentioned in the statutory.

Overall this is considered to be a positive step to promote patenting activity in the US and doing away with exceptions which were created by the Supreme Court.


  1. Draft bill for 35 U.S.C., May 22, 2019


  1. 35 U.S.C. 101


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35 U.S.C. 100, 35 U.S.C. 100 (k), 35 U.S.C. 101, draft bill, patent-eligible, judicial exceptions, Senators Thom Tillis, Chris Coons