Written By: Liz Gray (IP Lawyer) and Charlotte Tyhurst (IP Lawyer)
Over the years, there have been repeated attempts in the US to reform the provisions for patentable subject matter, which are set out in 35 U.S.C. § 101. Now, the US is considering a new and radical proposal: eliminating all judicial exceptions to patent eligibility.
The Current State of Patent Eligibility in the US
Under current US law, there are two criteria for determining whether a claimed invention is patent-eligible.
First, the invention must fall within one of the following statutory categories set out in 35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
Second, the claimed invention must also be directed to patent-eligible subject matter. That is, the invention must not be directed to a judicial exception, unless the claim as a whole includes additional elements that amount to “significantly more” than the judicial exception. Courts have found that judicial exceptions include abstract ideas, laws of nature, and natural phenomena (which includes products of nature).
These judicial exceptions often present challenges for applicants. For example, for software-related inventions, the boundary between an “abstract idea” and patent-eligible subject matter can be difficult to define. As a result, applicants with software-related inventions may face subject matter rejections on the basis that the invention is deemed to be only an “abstract idea”.
The bounds of patent eligibility can be difficult to determine even in non-software industries. For instance consider American Axle & Mfg. v. Neapco Holdings LLC, No. 18-1763 (Fed. Cir. 2019), in which claims directed to a method of manufacturing a drive shaft were considered to be directed to a natural law.
The Proposed Bill
The proposed Patent Eligibility Restoration Act of 2025 explicitly provides that “all judicial exceptions to patent eligibility are eliminated”. This proposal would significantly broaden access to patent protection, which is a decisive shift away from the body of case law that has previously narrowed patent eligibility on the basis of “abstract” subject matter.
Specifically, if passed, the Act would allow for patenting inventions that may have been previously excluded on the basis of subject matter, including software inventions and, more recently, inventions involving artificial intelligence.
These effects would be significant. For inventors and businesses, the Act would open the door to stronger protection for technologies that continue to face hurdles under the current framework for patent eligibility. On the international stage, such a dramatic change in US law would likely also provoke other jurisdictions to reassess their own approaches to subject matter eligibility.
That said, the Act is in its early days under consideration by the US Senate Committee on the Judiciary and may not ever come into force (or may be substantially altered). Still, it is a welcome signal to patent owners and applicants looking for clarity in US law.
What’s Next?
If passed, the Patent Eligibility Restoration Act of 2025 would bring significant reform to the US (and international) patent landscape. For innovators, investors, and businesses, expanded patent eligibility would radically transform IP strategies, particularly in technology-heavy industries.
For more information on patent eligible subject matter or how these potential changes might affect your company’s IP strategy in Canada, contact one of our experts today!
