The Patent Eligibility Restoration Act of 2023 -- Will it make over the finish line?

Senator Thom Tillis’ Patent Eligibility Restoration Act of 2023 is moving through the U.S. Senate.  It appears to be a compromise to earlier patent eligibility reform legislation.  Here are the main provisions of the act. 

 

§ 101. Patent eligibility (a) IN GENERAL.—Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject only to the exclusions in sub section (b) and to the further conditions and requirements of this title.

(b) ELIGIBILITY EXCLUSIONS.—

(1) IN GENERAL.—Subject to paragraph (2), a person may not obtain a patent for any of the following, if claimed as such: (A) A mathematical formula, apart from a useful invention or discovery. (B) A process that— (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity. (C) An unmodified human gene, as that gene exists in the human body. (D) An unmodified natural material, as that material exists in nature. 

(2) CONDITIONS.— (A) CERTAIN PROCESSES.—Notwithstanding paragraph (1)(B)(i), a person may obtain a patent for a claimed invention that is a process described in such provision if that process is embodied in a machine or manufacture, unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform. (B) HUMAN GENES AND NATURAL MATERIALS.—For the purposes of subparagraphs (C) and (D) of paragraph (1), a human gene or natural material that is isolated, purified, enriched, or otherwise altered by human activity, or that is otherwise employed in a useful invention or discovery, shall not be considered to be unmodified. 

(c) ELIGIBILITY.—  (1) IN GENERAL.—In determining whether, under this section, a claimed invention is eligible for a patent, eligibility shall be determined—  (A) by considering the claimed invention as a whole and without discounting or disregarding any claim element; and (B) without regard to— (i) the manner in which the claimed invention was made; (ii) whether a claim element is known, conventional, routine, or naturally occurring;  (iii) the state of the applicable art, as of the date on which the claimed invention is invented; or (iv) any other consideration in section 102, 103, or 112. 

(2) INFRINGEMENT ACTION.— (A) IN GENERAL.—In an action brought for infringement under this title, the court, at any time, may determine whether an invention or discovery that is a subject of the action is eligible for a patent under this section, including on motion of a party when there are no genuine issues of material fact. (B) LIMITED DISCOVERY.—With respect to a determination described in subparagraph (A), the court may consider limited discovery relevant only to the eligibility described in that subparagraph before ruling on a motion described in that subparagraph.

Join Free Webinar by OxFirst: European Commission Interferes in German Standard Essential Patents Dispute - What are the implications?

 Register Here: https://oxfirst.com/ec-amicus-brief-in-re-hmd-global-oy-vs-voiceage-evs/

OxFirst Free Webinar

September 17, 2024 15:00 PM- 16:00 PM British Standard Time = 16.00 PM CET = 10.00 a.m. Eastern Time

What this Talk is About

This is one of the first times the European Commission has issued an Amicus Brief, an instrument better known in US rather than European law. The European Commission has submitted an amicus curiae to the Higher Court of Munich, Germany, (Oberlandesgericht Muenchen) regarding an ongoing legal dispute between HMD Global Oy and VoiceAge EVS GmbH & Co KG, concerning the alleged use of standard-essential patents (SEPs). The European Commission emphasizes the need for a consistent interpretation of the Huawei vz ZTE Framework across European courts, highlighting differences in how the Munich and Mannheim courts have assessed similar cases. The brief does not take a position on the merits of the case but seeks to ensure uniform application of competition law. In this webinar we discuss the potential implications of the European Commission’s amicus brief and speculate the effect it may have on future judgments coming out of Munich.

About the Speakers

Alexander Haertel. Cluster Lead Patent at Deutsche Telekom

Alex is highly experienced in IP Litigation, especially in regard to patents. He has experience with all major German courts and also experience with invalidation proceedings like opposition or nullity proceedings before the Federal Patent Court/Federal Court of Justice.

Dr Andreas Kramer. Partner, Vossius & Brinkhof UPC Litigators

Andreas Kramer has extensive experience in patent infringement proceedings concerning  standard-essential patents (SEPs) and  FRAND defenses, in particular in the areas of mobile communication, audio and video codecs. He has been lead counsel in many SEP/FRAND litigations before the German courts and the Unified Patent Court (UPC).

Philipp Rastemborski, LL.M. (Edinburgh). Partner Eisenfuhr Speiser

Philipp Rastemborski represents clients in patent infringement and nullity proceedings, including related licensing matters. He has long-term experience in conducting and coordinating cross-border patent litigation proceedings before the German courts, in particular for US and other international clients. He has extensive experience in the enforcement and FRAND licensing of standard-essential patents (SEP) in the field of mobile communications and throughout the automotive value chain.

Major Cyber-Incidents Since 2006

The Center for Strategic and International Studies has a helpful list titled, "Significant Cyber Incidents," in its strategic technologies program, which provides information on major data breaches.  As cybersecurity attack campaigns tend to be wide ranging impacting numerous different companies and tactics are similar, the threat intelligence provided by the list is helpful in trying to predict future attacks.  Some have reported that data exfiltration is on the rise which impacts intellectual property and competitive advantage.