Why does PERA’s stab at patent eligibility reform feel like it’s solving yesterday’s problem with tomorrow’s duct tape?
The Patent Eligibility Reform Act (PERA), reintroduced in May 2025 by Senators Tillis and Coons, promises a clean-slate rewrite of §101. It’s got ambition—ditching the Supreme Court’s Mayo/Alice quagmire that turns half of software and biotech innovations into judicial piñatas. But here’s the rub: its exclusions? Toothless. Professors Jeffrey Lefstin and Peter Menell, from UC Law SF and Berkeley, call it out in a guest post, proposing tweaks that might actually stick.
Look, the current regime’s a mess. Alice kills data-processing patents on hair-splitting ‘abstract idea’ calls—no economic backing, just vibes. Biomed? Diagnostics get axed; treatments skate by. PERA nods at this, carving out ‘substantially economic, financial, business’ processes. Except—plot twist—it exempts anything needing a machine. Pencil? Paper? Boom, eligible. We’re left banning only mental math or dance moves. Laughable.
Why PERA’s Exclusions Barely Scratch the Surface?
PERA’s gene tweak—isolate ‘em without purification or utility, they’re out. Cute, but as the profs say, ‘vanishingly few useful claims’ flunk that. And natural materials? Redundant with existing law. Worse, no research carve-out means gene patents still choke labs.
The profs’ fix reframes everything around utility. No metaphysical ‘nature of the process’ dance. Instead:
A process whose primary utility is economic, financial, business, social, cultural, entertainment, artistic, or otherwise nontechnological.
That’s from their proposal—crisp, rooted in patent basics. Computers running such? Out too. Math formulas, standalone? Nope. Unmodified naturals, like raw genes? Excluded, unless altered or usefully deployed.
And the kicker—a research exemption for natural-material patents. Anyone—labs, rivals—gets to tinker without infringement fears. Business motives? Irrelevant. This isn’t PERA’s half-measure; it’s architectural surgery.
But wait—does this doom fintech apps or AI business logic?
Short answer: yeah, if their primary utility is shuffling money or ads. Here’s the thing: real inventors won’t claim the business end anyway—too broad under §112. They’ll patent the tech guts: novel compression, fraud-detection algorithms with inventive twists. PERA’s original lets that slip through; this pins it down.
How Does This Rewrite Patent’s DNA?
Think back to 1952. Congress baked eligibility into §101 simple—‘any new and useful process, machine…’—leaving scope to 102/103/112. Mayo/Alice? Supreme Court hunches overriding that, no data. Lefstin and Menell channel this: utility test echoes old enablement cases, judgeable without crystal balls.
In biomed, it greenlights diagnostic methods if utility’s medical—not economic risk-scoring. Data processing? Patent the how—quantum-secure ledgers, not ‘analyze transactions.’ AI hits hard here. Training models on public data? If utility’s inventive efficiency, not just business analytics, you’re golden.
My unique take: this mirrors the 1793 Patent Act’s pivot from England’s loose ‘ingenuity’ to U.S. utility focus—sparking industrialization. PERA-as-is? Stagnant. Profs’ version? Could unleash an AI-biotech patent boom, predictions be damned, by forcing claims to shine on tech merit.
Critique time. PERA smells of lobbyist compromise—tech wants software safe; pharma guards treatments. Tillis/Coons bill sidesteps, neutering exclusions. Profs call the bluff, but will Congress bite? Big Pharma might howl at gene research frees; VCs cheer narrower business patents.
The proof’s in application. Take Federal Circuit’s Enfish: self-indexing DB eligible. Under profs’ rule? Utility’s technological data handling—not business reporting. Alice said yes anyway, but this codifies without caselaw roulette.
Biotech’s Myriad redux: isolated genes ineligible now. PERA keeps it fuzzy; proposal clarifies, adds research shield—echoing Europe’s bold research exemption, which hasn’t killed innovation.
Will Professors’ PERA Patch Actually Pass?
Doubtful without war chests. But it’s a blueprint. House parallel bill? Stalled before. Pushback from EFF (too pro-patent) and pharma (research fears). Yet Alice uncertainty costs billions—McKinsey pegs $40B/year in deadweight scrutiny.
Bold prediction: if AI patent suits explode (they will, post-Oracle), this utility frame becomes catnip for reformers. Ties eligibility to what patents always demanded: concrete utility, not abstractions.
Corporate spin? PERA backers tout ‘certainty.’ Baloney—machine exemption creates new fog. Profs deliver precision.
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Frequently Asked Questions
What is the Patent Eligibility Reform Act (PERA)?
PERA aims to overhaul §101, excluding broad categories like economic processes while exempting machine-aided ones—critics say it barely changes Alice.
How does Lefstin and Menell’s proposal improve PERA?
Shifts to utility-based exclusions (e.g., nontechnological primary use), bans computerized business processes, and adds a research exemption for natural materials.
Will PERA reform affect AI and software patents?
Likely yes—pure business AI apps get excluded, but inventive tech implementations (e.g., novel algorithms) should survive under a utility test.
