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  • Writer's pictureRic Armstrong

What You Need to Know About the Patent Eligibility Restoration Act (PERA)

The  Patent Eligibility Restoration Act (PERA) seeks to provide better clarity over patent subject matter eligibility under Section 101 of the Patent Act. The intent of the Act is to eliminate the judicially created exceptions to patent eligibility by providing clearer guidance on determining patent eligibility.

To address these issues, PERA states, “Any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, is eligible for patent protection. It goes on to state, “The term ‘useful’ means . . . that the invention or discovery has a specific and practical utility from the perspective of a person of ordinary skill in the art to which the invention or discovery pertains.”

PERA’s limited set of exceptions to patent eligibility include:

  • a mathematical formula that is not part of an invention

  • a process that is substantially economic, financial, business, social, cultural, or artistic

  • a process that is a mental process performed solely in the human mind, or occurs in nature wholly independent of, and prior to, any human activity

  • an unmodified human gene, as that gene exists in the human body

  • an unmodified natural material, as that material exists in the nature

PERA also seeks to provide better clarity on the patentability of computer-related inventions stating that “any process that cannot be practically performed without the use of a machine (a computer) or manufacture shall be eligible for patent coverage.” 

There are exceptions. A process that is substantially economic, financial, business, social, cultural, or artistic is not patent eligible, even though not less than 1 step in the process refers to a machine or manufacture. 

Furthermore, process claims that refer solely to the steps undertaken by human beings in methods of doing business shall not be eligible for patent coverage.  Adding a non-essential reference to a computer by merely stating, for example, “Do it on a computer,” also does not establish patent eligibility.

Finally, PERA provides guidance as to how the courts should determine whether eligible subject matter is being claimed. According to PERA, patent eligibility shall be determined by considering the claimed invention as a whole and without discounting or disregarding any claim elements and without regard to:  the manner in which the claimed invention was made … whether a claim element is known, conventional, routine, or naturally occurring … the state of the applicable art, as of the date on which the claimed invention is invented  … or any other consideration in section 102, 103, or 112 of the Patent Act.

Should you have any questions or concerns about the Patent Eligibility Act (PERA), please reach out to Derek Saunders, Keith Strahan, or Richard Armstrong of our firm, shown here:


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