Lawmakers Propose Changes to Framework of Sections 101 on Patent Eligibility and 112(f) on Functional Claiming

May 30, 2019

Members of the US Senate Judiciary Subcommittee on Intellectual Property and House Intellectual Property Subcommittee recently released a bipartisan, bicameral draft bill to reform patent eligibility under 35 USC § 101 and amend the language of 35 USC § 112(f).

In the draft bill, “Additional Legislative Provisions” state that “[n]o implicit or other judicially created exceptions to subject matter eligibility, including ‘abstract ideas,’ ‘laws of nature,’ or ‘natural phenomena,’ shall be used to determine patent eligibility under section 101.” The draft bill would expressly abrogate “all cases establishing or interpreting those exceptions to eligibility.”

In addition, the draft bill states that “[t]he provisions of section 101 shall be construed in favor of eligibility,” and it would strike the term “new” from the current “new and useful” requirement. “Useful,” in turn, would be defined as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”

This proposal generally tracks the lawmakers’ “Draft Outline of Section 101 Reform” released in April, which announced an intent to “[e]liminate, within the eligibility requirement, that any invention or discovery be both ‘new and useful.’”

But other aspects of the draft bill deviate from the draft outline. For example, the draft bill does not list any categories of ineligible subject matter, such as “fundamental scientific principles” or “economic or commercial principles.” Nor does the draft bill provide that otherwise-ineligible subject matter integrated into a “practical application” should be considered patent eligible. This concept instead appears to be incorporated into the “specific and practical utility” requirement.

The draft bill’s “Additional Legislative Provisions” also instruct that the analysis under Section 101 should not turn on “the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; [and] the state of the art at the time of the invention.”

Finally, in what may be a bargaining chip for anticipated opposition, the draft bill proposes amending 35 USC § 112(f) as follows:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Potential Implications

By abrogating the judicial exceptions to subject matter eligibility and exclusively focusing on an invention’s utility, the draft bill apparently attempts to expand patent protection to at least some inventions currently considered to be abstract ideas, laws of nature, or natural phenomena. A claimed invention that is “useful” under Section 101 will be patentable so long as it complies with all remaining statutory requirements—e.g., it is novel, nonobvious, definite, and described such that a person skilled in the art could make and use it.

But the draft bill’s proposed definition of “useful” may ultimately create more uncertainty than it solves. To be “useful,” a process, machine, manufacture, composition of matter, or improvement thereof must be (1) an invention or discovery that (2) provides specific and practical utility (3) in any field of technology and (4) through human intervention. (Presumably, the utility must be provided through human intervention.) This definition may resurrect many of the judicial exceptions that the draft bill seeks to eliminate. In some cases, the components may create new uncertainties. For example:

  • Can an abstract idea’s utility be “specific and practical”?
  • Are mental processes, products that exist exclusively in nature, and business methods in a “field of technology”?
  • Do wholly automated processes, laws of nature, and natural phenomena provide utility “through human intervention”?

The most likely result of the draft bill appears to be that new diagnostic methods, as just one example, would pass the Section 101 threshold. A new diagnostic method, although based on a natural law, could “provid[e] specific and practical utility . . . through human intervention.”

The effect on other types of claims is less certain. It is questionable whether the draft bill provides greater “predictability and stability to the patent eligible subject matter inquiry” than the current version of Section 101 and the case law that has interpreted it.

As for Section 112(f), the proposed amendment would remove the “means for” and “step for” language, thereby expressly shedding the provision’s infamous “magic words,” and instead giving means-plus-function scope to any element “expressed as a specified function without the recital of structure, material, or acts in support thereof.”

But the practical effect of removing the “magic words” is likely minimal. The proposed amendment appears to simply reflect the US Court of Appeals for the Federal Circuit’s en banc decision in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). In Williamson, the Federal Circuit explained that, although failure to use the word “means” creates a rebuttable presumption that Section 112(f) does not apply, the presumption can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at 1348, 1349.


The lawmakers backing the draft bill noted that the draft “is intended to solicit feedback[,] . . . is not final, and is subject to additional revision.” The Senate Judiciary Subcommittee on Intellectual Property will hold hearings in June regarding “the state of patent eligibility in the United States.” The hearings will feature three panels, each consisting of five witnesses.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, William R. Peterson in our Houston office and Karon N. Fowler in our Chicago office, or any of the following lawyers from Morgan Lewis’s IP disputes team:

Joshua M. Dalton

Century City
Olga Berson, Ph.D.
Andrew V. Devkar
Seth M. Gerber

Michael J. Abernathy
Christopher J. Betti, Ph.D.
Wan-Shon Lo
Scott D. Sherwin
Kevin P. Shortsle
Krista Vink Venegas, Ph.D.
Jason C. White
Amanda S. Williamson

C. Erik Hawes
David J. Levy
Rick L. Rambo

David W. Marston Jr. 

Louis W. Beardell, Jr.
Kenneth J. Davis
John L. Hemmer
Eric Kraeutler

San Francisco
Brent A. Hawkins
Carla B. Oakley

Silicon Valley
Dion M. Bregman
Andrew J. Gray IV
Michael J. Lyons
Yalei Sun

Washington, DC
Natalie A. Bennett
Robert C. Bertin
Robert J. Gaybrick
Nathan W. McCutcheon
Eric S. Namrow
Collin W. Park

John V. Gorman