II 

117TH CONGRESS 

2D SESSION S. 4734 

To amend title 35, United States Code, to address matters relating to patent 

subject matter eligibility, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

AUGUST 2, 2022 

Mr. TILLIS introduced the following bill; which was read twice and referred 

to the Committee on the Judiciary 

A BILL 

To amend title 35, United States Code, to address matters 

relating to patent subject matter eligibility, and for other 

purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Patent Eligibility Res5 toration Act of 2022’’. 

6 SEC. 2. PATENT ELIGIBILITY. 

7 (a) IN GENERAL.—Chapter 10 of title 35, United 

8 States Code, is amended— 

9 (1) in section 100— 


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1 (A) in subsection (b), by striking ‘‘includes 

2 a new use of a known process’’ and inserting 

3 ‘‘includes a use, application, or method of man4 ufacture of a known or naturally-occurring 

5 process’’; and 

6 (B) by adding at the end the following: 

7 ‘‘(k) The term ‘useful’ means, with respect to an in8 vention or discovery, that the invention or discovery has 

9 a specific and practical utility from the perspective of a 

10 person of ordinary skill in the art to which the invention 

11 or discovery pertains.’’; and 

12 (2) by amending section 101 to read as follows: 

13 ‘‘§ 101. Patent eligibility 

14 ‘‘(a) IN GENERAL.—Whoever invents or discovers 

15 any useful process, machine, manufacture, or composition 

16 of matter, or any useful improvement thereof, may obtain 

17 a patent therefor, subject only to the exclusions in sub18 section (b) and to the further conditions and requirements 

19 of this title. 

20 ‘‘(b) ELIGIBILITY EXCLUSIONS.— 

21 ‘‘(1) IN GENERAL.—Subject to paragraph (2), a 

22 person may not obtain a patent for any of the fol23 lowing, if claimed as such: 

24 ‘‘(A) A mathematical formula, apart from 

25 a useful invention or discovery. 


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1 ‘‘(B) A process that— 

2 ‘‘(i) is a non-technological economic, 

3 financial, business, social, cultural, or ar4 tistic process; 

5 ‘‘(ii) is a mental process performed 

6 solely in the human mind; or 

7 ‘‘(iii) occurs in nature wholly inde8 pendent of, and prior to, any human activ9 ity. 

10 ‘‘(C) An unmodified human gene, as that 

11 gene exists in the human body. 

12 ‘‘(D) An unmodified natural material, as 

13 that material exists in nature. 

14 ‘‘(2) CONDITIONS.— 

15 ‘‘(A) CERTAIN PROCESSES.—Notwith16 standing paragraph (1)(B)(i), a person may ob17 tain a patent for a claimed invention that is a 

18 process described in such provision if that proc19 ess is embodied in a machine or manufacture, 

20 unless that machine or manufacture is recited 

21 in a patent claim without integrating, beyond 

22 merely storing and executing, the steps of the 

23 process that the machine or manufacture per24 form. 


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1 ‘‘(B) HUMAN GENES AND NATURAL MATE2 RIALS.—For the purposes of subparagraphs (C) 

3 and (D) of paragraph (1), a human gene or 

4 natural material that is isolated, purified, en5 riched, or otherwise altered by human activity, 

6 or that is otherwise employed in a useful inven7 tion or discovery, shall not be considered to be 

8 unmodified. 

9 ‘‘(c) ELIGIBILITY.— 

10 ‘‘(1) IN GENERAL.—In determining whether, 

11 under this section, a claimed invention is eligible for 

12 a patent, eligibility shall be determined— 

13 ‘‘(A) by considering the claimed invention 

14 as a whole and without discounting or dis15 regarding any claim element; and 

16 ‘‘(B) without regard to— 

17 ‘‘(i) the manner in which the claimed 

18 invention was made; 

19 ‘‘(ii) whether a claim element is 

20 known, conventional, routine, or naturally 

21 occurring; 

22 ‘‘(iii) the state of the applicable art, 

23 as of the date on which the claimed inven24 tion is invented; or 


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1 ‘‘(iv) any other consideration in sec2 tion 102, 103, or 112. 

3 ‘‘(2) INFRINGEMENT ACTION.— 

4 ‘‘(A) IN GENERAL.—In an action brought 

5 for infringement under this title, the court, at 

6 any time, may determine whether an invention 

7 or discovery that is a subject of the action is el8 igible for a patent under this section, including 

9 on motion of a party when there are no genuine 

10 issues of material fact. 

11 ‘‘(B) LIMITED DISCOVERY.—With respect 

12 to a determination described in subparagraph 

13 (A), the court may consider limited discovery 

14 relevant only to the eligibility described in that 

15 subparagraph before ruling on a motion de16 scribed in that subparagraph.’’. 

17 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

18 The table of sections for chapter 10 of title 35, United 

19 States Code, is amended by striking the item relating to 

20 section 101 and inserting the following: 

‘‘101. Patent eligibility.’’. 

Æ 


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