FICPI // Focus 45 - Progress in 101 Reform: The Patent Eligibility Restoration Act of 2023 (PERA)

In this session FICPI Focus 45 moderator Louis-Pierre Gravelle will discuss the  Progress in 101 Reform:  The Patent Eligibility Restoration Act of 2023 (PERA) with David J. Kappos.

The Patent Eligibility Reform Act of 2023 (PERA) is intended to clarify the scope of what Congress intended to be patent eligible subject matter under 35 U.S.C. 101, in the face of various Supreme Court decisions that would seek to unreasonably restrict such eligibility.  Since decisions in Mayo, Myriad and Alice and their progeny, the U.S. Patent and Trademark Office (USPTO), as well as the U.S. Federal Court system, including the Federal Circuit, have struggled to decipher the metes and bounds of what can and cannot be patented in the U.S.  These judicial limitations are at odds with not only the intent of the Patent Act of 1793 and current 35 U.S.C. 101, but also with subject matter eligibility guidelines in other jurisdictions around the world.  As a result, applicants have struggled to patent inventions in the U.S., most notably in medical diagnostics and computer-implemented inventions, while such inventions can be patented in jurisdictions like Europe and China.  The result is a stifling of innovation and an inability for technology companies to compete with entities that can obtain patent protection abroad.

PERA seeks to abrogate the Supreme Court precedent and to modify 35 U.S.C. 101 to specify only certain narrow exceptions to subject matter eligibility, including natural substances and processes that are wholly independent of human activity (including unmodified human genes as they exist in the human body), purely mathematical formulae that are not otherwise part of a useful process, machine, manufacture, or composition and purely mental processes that can be performed solely in the human mind.

On January 23, 2024, David Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the USPTO, provided testimony to the U.S. Senate IP Subcommittee regarding PERA.  He will be in conversation with our FICPI Focus45 moderator, Louis-Pierre Gravelle, to give us his thoughts on this proposed legislation.

CPD/CLE certificates can be provided.

There is no charge to attend this webinar.

FICPI members and guests are welcome.