Patentability

Few questions in patent law have caused clients more frustration than the most basic one of all – whether an invention is even eligible for a patent in the first place. Since the Supreme Court’s decisions in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), Section 101 of the Patent Statute (35 USC § 101) has become a morass of uncertainty, especially for software and computer-implemented inventions. Under the two-step Alice/Mayo framework, a court first asks whether a claim is “directed to” one of the judicially created exceptions – an “abstract idea,” a “law of nature,” or a “natural phenomenon” – and, if so, whether the claim recites something more, an “inventive concept,” sufficient to make it patent-eligible. In our experience, the hardest part of the test to live with is its unpredictability: two thoughtful judges, or two examiners, can look at the same claim and reach opposite conclusions. To make matters worse, the “inventive concept” analysis conflates novelty and non-obviousness with patent eligibility.

Congress is once again trying to fix the problem by statute. A bipartisan, bicameral group of unlikely allies – Senators Thom Tillis (R-NC) and Chris Coons (D-DE), together with Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) – is backing the Patent Eligibility Restoration Act, or “PERA” (S. 1546), a bill that would rewrite Section 101 and do away with the Alice/Mayo exceptions altogether.

What PERA Would Do

PERA would rewrite Section 101 from the ground up. Its central move is to eliminate the judge-made exceptions – the “abstract idea,” “law of nature,” and “natural phenomenon” categories – that the Supreme Court layered onto the statute, and to replace them with a closed, statutory list of things that cannot be patented. Under the bill, courts and the USPTO would evaluate a claim “as a whole,” rather than dissecting it into old and new pieces in search of an “inventive concept.” In other words, the conventional aspects of a computer would count for purposes of determining whether something is patent-eligible subject matter.

The categories the bill would exclude are comparatively narrow: a mathematical formula standing apart from a claimed invention; a process performed solely in the human mind; an unmodified human gene as it exists in the body; an unmodified natural material as it exists in nature; and a process that is substantially economic, financial, business, social, cultural, or artistic. That last category carries an important qualification that matters a great deal on the computer side: such a process is excluded even if one of its steps recites a machine – but it is not excluded if it cannot practically be performed without a machine. In plain terms, PERA draws the line between genuinely technological implementations, which are eligible, and ordinary business methods dressed up in computer clothing, which are not.

What Would Become Patentable Again

The practical impact would be greatest for computer-implemented inventions, which have borne the brunt of Alice. Because the “abstract idea” category would simply disappear, a large body of software and hardware claims that the Federal Circuit invalidated over the past decade would likely clear the eligibility hurdle under PERA – so long as they do not fall within one of the bill’s narrow exclusions. A few concrete examples, all real cases in which patents were held ineligible, make the point. Keep in mind that the claims may still be unpatentable for lack of novelty or obviousness, but they would still likely constitute statutory subject matter.

In Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the Federal Circuit held claims to a system for monitoring an electric power grid in real time invalid as directed to the abstract idea of collecting, analyzing, and displaying data. Under PERA that is simply a technological method of processing information – not a bare mathematical formula, not a purely mental process, and not an economic practice – and it would very likely be eligible, with the real contest shifting to where it belongs, under Sections 102, 103, and 112.

In ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019), the court held claims to a network-connected electric-vehicle charging station ineligible, reasoning that the claims merely added generic networking capabilities to a charging station. PERA does not exclude networked devices, and a charging station plainly cannot be operated in the human mind – so a claim of this kind would very likely survive as eligible subject matter.

The shift would not be confined to software. In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), the Federal Circuit held a method of manufacturing a driveshaft ineligible as nothing more than an application of a natural law (Hooke’s law) used to tune a liner to dampen vibration. PERA eliminates the “law of nature” exception, and a method of manufacturing an article is nowhere on its exclusion list – so a claim like the one in American Axle would very likely be statutory once again, even if applying a centuries-old law of physics might be deemed obvious.

PERA still excludes substantially economic, financial, and business processes, even if they are computerized. The lesson is that PERA would rescue genuinely technological inventions from the “abstract idea” label, but it would not turn business methods run on a computer into patentable subject matter.

Where the Bill Stands

On July 14, 2026, the full Senate Judiciary Committee, chaired by Senator Chuck Grassley, held a hearing titled “From Genes to Machines: The Patent Eligibility Debate” – the first time the full committee, rather than the Intellectual Property subcommittee, had taken up the bill, a signal that eligibility reform has moved up the agenda. Two former Directors of the USPTO testified in support, describing the current uncertainty as a real drag on innovation and investment. Notably, the principal sticking point was on the genetic side rather than the computer side: critics worry that the bill’s treatment of human genes could unsettle the Supreme Court’s decision in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), and Senator Tillis, who is retiring at the end of this Congress, signaled that he is open to revising that language. No markup or committee vote has been scheduled.

The Battle Lines

The dispute breaks along familiar lines. Supporters include companies and institutions that depend on protecting software, artificial intelligence, and diagnostic innovations – along with universities, venture investors, and startups – who argue that Alice has made too many genuine inventions unpatentable and pushed inventors toward trade-secret protection instead of the public disclosure the patent system is meant to encourage. Opponents are largely segments of the technology industry, which view the Alice framework as a valuable tool for knocking out overbroad, low-quality software patents early and cheaply, and worry that PERA would set off a new wave of litigation. Which camp you sit in tends to depend on whether you more often assert patents or defend against them.

Practical Guidance for Patent Owners and Applicants

For now, the Alice/Mayo framework remains the law, and the sensible moves are the ones we have long recommended. Continue to frame computer-implemented inventions around a concrete, technical improvement to the operation of a computer, a network, or a device – rather than a bare result or a business objective – and build that story into the specification from the outset. That framing helps under current law, and it would keep a claim on the right side of PERA’s business-method exclusion if the bill passes. Keep a continuation pending wherever the budget allows, so that a live application gives you the flexibility to pursue broader or differently framed claims if PERA is enacted.