This week, the Senate Judiciary Subcommittee on Intellectual Property held the first two of a three-part series of hearings on “The State of Patent Eligibility in America.”  The hearings are part of an ongoing bipartisan congressional effort to reform section 101 of the Patent Act to address confusion over patent eligibility wrought by more than a decade of Supreme Court decisions. Each hearing includes three panels of five witnesses, for an impressive total of 45 witnesses over three days.

The first hearing, held on June 4th, featured former government officials and academics, including former Federal Circuit Chief Judge Paul Michel, former USPTO directors Q. Todd Dickinson and David Kappos, and Mark Lemley of Stanford University.  The second hearing, held on June 5th, included testimony from a number of trade associations and coalitions, such as AIPLA, IPO, Innovation Alliance, and Pharmaceutical Research and Manufacturers of America (PhRMA). A third hearing is scheduled for June 11th.

For the past decade, there has been a rising chorus of stakeholders concerned with the Supreme Court’s decade-long narrowing of patent eligible subject matter under section 101, and the resulting unpredictability and confusion.  The scope of judicially created exceptions to patent eligible subject matter has grown, causing uncertainty as to what inventions are, and are not, eligible for patent protections.

Five years after the Court’s Alice v. CLS Bank decision, a bipartisan, bicameral group of senators and representatives recently unveiled a draft bill to reform section 101.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate IP Subcommittee, along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released the draft bill this spring in an effort to “restore predictability and stability to the patent eligible subject matter inquiry.”  This draft legislation comes after months of roundtable discussions and feedback from dozens of stakeholders, including industry representatives, inventors, and academics.

The draft text creates a presumption in favor of patent eligibility,  by providing that “provisions of section 101 shall be construed in favor of eligibility.”  It maintains the current categories of patent eligible subject matter (“any useful process, machine, manufacture, or composition of matter”) and eliminates all judicially created exceptions, including abstract ideas, laws of nature, or natural phenomena.  It also explicitly requires that patent eligible subject matter have utility through human intervention.

The draft bill specifically addresses a number of challenges with the way section 101 is currently applied, clarifying that (1) the claimed invention should be considered as a whole, not as discrete pieces, and (2) subject matter eligibility under section 101 is a distinct inquiry that should not be conflated with the other requirements for patentability under the Patent Act, including sections 102 (novelty), 103 (non-obviousness), and 112 (written description, enablement, and definiteness), all which of must be met for a valid patent.  Finally, the draft bill proposes an amendment to a different statutory provision—section 112(f)—that would broaden the scope of the application of section 112(f), which governs when structural limitations from the patent specification may be imported to the claimed invention.

The IP Subcommittee plans to hold a third hearing next Tuesday, June 11.  That hearing will feature company representatives.

Chairman Tillis and Ranking Member Coons have clarified that the proposal is subject to additional discussion and revision.  However, the bipartisan group of members has devoted significant time engaging stakeholders in an attempt to restore predictability and clarity to patent eligibility law.  How, and if, Congress reforms section 101 in this Congress remains to be seen, and Covington will continue to monitor the deliberations on this issue.

Photo of Holly Fechner Holly Fechner

Holly Fechner advises clients on complex public policy matters that combine legal and political opportunities and risks. She leads teams that represent companies, entities, and organizations in significant policy and regulatory matters before Congress and the Executive Branch.

She is a co-chair of…

Holly Fechner advises clients on complex public policy matters that combine legal and political opportunities and risks. She leads teams that represent companies, entities, and organizations in significant policy and regulatory matters before Congress and the Executive Branch.

She is a co-chair of the Covington’s Technology Industry Group and a member of the Covington Political Action Committee board of directors.

Holly works with clients to:

  • Develop compelling public policy strategies
  • Research law and draft legislation and policy
  • Draft testimony, comments, fact sheets, letters and other documents
  • Advocate before Congress and the Executive Branch
  • Form and manage coalitions
  • Develop communications strategies

She is the Executive Director of Invent Together and a visiting lecturer at the Harvard Kennedy School of Government. She serves on the board of directors of the American Constitution Society.

Holly served as Policy Director for Senator Edward M. Kennedy (D-MA) and Chief Labor and Pensions Counsel for the Senate Health, Education, Labor & Pensions Committee.

She received The American Lawyer, “Dealmaker of the Year” award. in 2019. The Hill named her a “Top Lobbyist” from 2013 to the present, and she has been ranked by Chambers USA – America’s Leading Business Lawyers from 2012 to the present.

Photo of Matthew Shapanka Matthew Shapanka

Matthew Shapanka draws on more than 15 years of experience from Capitol Hill, private practice, state government, and political campaigns to counsel clients significant legislative, regulatory, and enforcement matters. He develops and executes complex, multifaceted public policy initiatives for clients seeking actions by…

Matthew Shapanka draws on more than 15 years of experience from Capitol Hill, private practice, state government, and political campaigns to counsel clients significant legislative, regulatory, and enforcement matters. He develops and executes complex, multifaceted public policy initiatives for clients seeking actions by Congress, state legislatures, and federal and state government agencies, many with significant legal and political opportunities and risks. Matt also leads the firm’s state policy practice, advising clients on complex multistate legislative and regulatory policy matters and managing state advocacy efforts.

Matt rejoined Covington after serving as Chief Counsel for the U.S. Senate Committee on Rules and Administration, where he advised Chairwoman Amy Klobuchar (D-MN) on all legal, policy, and oversight matters before the Committee, including federal election and campaign finance law, Federal Election Commission nominations, and oversight of legislative branch agencies, U.S. Capitol security, and Senate rules and regulations. Most significantly, Matt led the Committee’s staff work on the Electoral Count Reform Act – a landmark bipartisan law enacted in 2022 to update the procedures for certifying and counting votes in presidential elections —and the Committee’s joint (with the Homeland Security Committee) bipartisan investigation into the security planning and response to the January 6, 2021 attack on the Capitol.

Both in Congress and at Covington, Matt has prepared dozens of corporate and nonprofit executives, academics, government officials, and presidential nominees for testimony at congressional committee hearings and depositions. He is also an experienced legislative drafter who has composed dozens of bills introduced in Congress and state legislatures, including several that have been enacted into law across multiple policy areas.

In addition to his policy work, Matt advises and represents clients on the full range of political law compliance and enforcement matters involving federal election, campaign finance, lobbying, and government ethics laws, the Securities and Exchange Commission’s “Pay-to-Play” rule, and the election and political laws of states and municipalities across the country.

Before law school, Matt worked in the administration of former Governor Deval Patrick (D-MA) as a research analyst in the Massachusetts Recovery & Reinvestment Office, where he worked on policy, communications, and compliance matters for federal economic recovery funding awarded to the state. He has also worked for federal, state, and local political candidates in Massachusetts and New Hampshire.