Joining Senators Tillis and Coons were Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA), who led the introduction of PERA in the House of Representatives, and Deborah Ross (D-NC), who led the introduction of the PREVAIL Act.
Present in Washington D.C. representing FICPI were Roberto Pistolesi, FICPI President and Sharon Crane, FICPI Deputy Secretary
The background
FICPI strongly supported the proposed Patent Eligibility Restoration Act of 2023 which was introduced by U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-Del) on June 22, 2023, following several years of discussions with stakeholders. FICPI played an active role in those conversations, representing our worldwide community of independent IP attorneys and their diverse range of clients and providing an international perspective.
Click to read FICPI's position paper.
Prior to the Act, patent subject-matter eligibility in the US had become a complex matter as a result of the lack of clarity in defining patent-eligible subject matter after the Mayo, Myriad and Alice Supreme Court cases in the 2010s, the Federal Circuit’s attempts to follow this precedent, and the Supreme Court’s continuing denial of certiorari in cases appealing decisions on rejections under 35 USC § 101.
1 May 2025 press event
The 1 May press release states, “This bipartisan, bicameral legislation will restore patent eligibility to important inventions across many fields while also resolving legitimate concerns over the patenting of mere ideas, the mere discovery of what already exists in nature, and social and cultural content that everyone agrees is beyond the scope of the patent system. It also affirms the basic principle that the patent system is central to promoting technology-based innovation.”
The release quotes Senator Tillis as saying, “Clear, reliable, and predictable patent rights are imperative to enable investments in the broad array of innovative technologies that are critical to the economic and global competitiveness of the United States, and to ensuring the national security of our great country.
“Unfortunately, a series of Supreme Court decisions have rendered patent eligibility law unclear, unreliable, and unpredictable, resulting in U.S. inventors being unable to obtain patents in areas where our economic peers offer patent protection. This is particularly concerning in the economically critical areas of biotechnology and artificial intelligence. This bipartisan, bicameral legislation maintains the existing statutory categories of eligible subject matter, which have worked well for over two centuries, while addressing inappropriate judicially created eligibility limitations by creating clear rules for what is eligible. We cannot allow foreign adversaries like China to overtake us in key areas of technology innovation due to the current state of patent eligibility law. I look forward to continuing to work with all stakeholders on this important matter. Passing patent eligibility reform is one of my top legislative priorities.”
FICPI is noted in the press release as one of the organisations supporting the Patent Eligibility Restoration Act.
Next steps
- Read more background on this in Sharon's 2024 blog for FICPI, "Can America’s broken law of patent subject matter eligibility be fixed?"
- Sharon's 2020 blog "Will the US emerge from the subject matter eligibility abyss?" will also be of interest.
- FICPI members may log into the site to watch our 2024 webinar "Progress in 101 Reform" where FICPI Focus 45 moderator Louis-Pierre Gravelle discussed the progress in 101 Reform: The Patent Eligibility Restoration Act of 2023 (PERA) with David J. Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the USPTO, who provided testimony to the U.S. Senate IP Subcommittee regarding PERA on January 23, 2024.
