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Congressional ______
*Research Service
Judges Urge Congress to Revise What Can Be
Patented
August 26, 2019
What can be patented? A series of Supreme Court decisions beginning nearly a decade ago catapulted that
question to the forefront of patent law. Since then the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit)-the only federal appeals court that hears patent law appeals-has issued a number of
decisions limiting patent eligibility. Some stakeholders, however, view the current law as discouraging
important innovations like medical diagnostic tests. One commenter has lamented that thanks to the
Supreme Court the most exciting scientific discoveries, technological advances[,] and innovations of the
twenty-first century are no longer patent eligible in America. Supporters contend, however, that current
law weeds out bad patents and facilitates the early resolution of patent infringement cases.
This issue has attracted significant interest from the 116th Congress. For instance, in early June, the
Senate Judiciary Committee held three days of hearings (Part I; Part II; Part III) on [t]he State of Patent
Eligibility in America and draft amendments to the relevant statutory provisions. And the debate over
patent eligibility has extended beyond Capitol Hill. In July, in Athena Diagnostics, Inc. v. Mayo
Collaborative Services, the Federal Circuit denied full-court review of a decision holding that a diagnostic
method was patent-ineligible. In eight separate opinions, all of the active judges of the Federal Circuit
called for the law to be changed to allow for the patenting of diagnostic methods. In light of this debate
both in and outside of Congress, this Sidebar provides a brief overview of the current law of patent
eligibility, before discussing the opinions in Athena and the importance of the issue for Congress.
The Law of Patent Eligibility
Patent eligibility is governed by, among other provisions, 35 U.S.C. § 101, which reads that [w]hoever
invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of' the Patent Act. (Section 101 is not the only requirement for patentability; an invention
must also be novel and nonobvious, and the application must describe and set forth the invention in a
manner clear enough for others to make it.) Despite section 10 1's seemingly broad language, the Supreme
Court has long held that laws of nature, natural phenomena, and abstract ideas are not patentable. For
example, the Court has opined that a new mineral discovered in the earth or a new plant found in the
wild is not patentable subject matter, nor is Albert Einstein's celebrated law that E=mc2. The basis for
Congressional Research Service
https://crsreports.congress.gov
LSB10344
CRS Legal Sidebar
Prepared for Members and
Committees of Congress](ViewImageLocal?handle=hein.crs/govbbax0001&div=1&collection=&method=preview&ext=.png&size=3)