For over a decade, a series of Supreme Court decisions has created a complex and unpredictable legal framework for determining what is eligible for a U.S. patent. In response, Congress has reintroduced the Patent Eligibility Restoration Act of 2025 (PERA), a bill designed to bring statutory clarity back to 35 U.S.C. § 101. On October 8, 2025, three well respected voices in intellectual property—former USPTO Directors Andrei Iancu and David Kappos, and Senior Technology Fellow Mark Cohen—testified before the Senate Judiciary Committee.
While their message was unified in its support for PERA, they approached the problem from three distinct and complementary angles: Iancu provided the legal and historical framework, Kappos detailed the direct economic fallout, and Cohen outlined the urgent geopolitical consequences. Together, their testimonies paint a comprehensive picture of a system in crisis.
Andrei Iancu: Restoring the Statutory Guardrails
Former USPTO Director Andrei Iancu presented a historical and legal critique, arguing that the judiciary has systematically dismantled the clear structure Congress established in the Patent Act of 1952. He explained that the Act deliberately separated the threshold eligibility question of § 101 from the substantive requirements of novelty, non-obviousness, and disclosure in other sections. However, the courts have created a “patchwork of judge-made exclusions that Congress never enacted” (Iancu, p. 1).
This judicial activism, he warned, has led courts to “’commingle’ the categories of invention in § 101 with the conditions for patentability in §§ 102, 103, and 112” (Iancu, p. 4). The result is a legal doctrine so unstable that “in all twelve judges sitting on the en banc Federal Circuit lamented the state of eligibility law, describing it as incoherent and unworkable” (Iancu, p. 1).
Iancu stressed that this is a problem only Congress can fix. While the USPTO under his leadership issued guidance that “reduced uncertainty in first-action eligibility determinations by 44 percent,” he noted that “courts are not bound by USPTO guidance, and the gap between examination and litigation outcomes persists” (Iancu, p. 2).
For Iancu, PERA is the necessary solution because it restores the proper constitutional order, replacing “amorphous judicial carve-outs with short, explicit rules enacted by Congress” (Iancu, p. 7).
David Kappos: Sounding the Alarm on Economic Harm
Complementing the legal analysis, former USPTO Director David Kappos focused on the devastating economic consequences of this legal instability, which he bluntly called “doctrinal chaos” (Kappos, p. 1).
He argued that when innovators and investors “can’t rely on predictable eligibility rules, investment pulls back, R&D stalls and opportunities are lost” (Kappos, p. 1).
One of the most damaging results is the flight of innovation to secrecy. “When eligibility is unpredictable,” Kappos explained, “the rational move often becomes ‘don’t disclose keep it in the vault’” (Kappos, p. 2). This trend undermines the very purpose of the patent system and marks an “alarming return to practices not seen since the Middle Ages, when powerful guilds kept craft knowledge as trade secrets” (Kappos, p. 2).
He provided a prime example of the ongoing legal confusion, pointing to two recent Federal Circuit cases, Yu v. Apple and Contour IP Holding, involving very similar digital camera technology that received opposite eligibility rulings from different judges. This shows that the “ambiguity of the ‘abstract idea’ test... allows different panels of a single appellate court... to reach different results on nearly the same facts” (Kappos, p. 6).
PERA, he concluded, would fix this by making § 101 a “broadly welcoming gate, not a guillotine,” allowing the other sections of the patent code to properly assess inventiveness (Kappos, p. 3).
Mark Cohen: The Global Competition with China
Mark Cohen, a Senior Technology Fellow with the Asia Society of Northern California and Senior Fellow at the University of Akron Law School, provided the third perspective, placing the domestic legal and economic problems in a global, geopolitical context. He detailed how, as the U.S. has “created unclear rules which narrow the scope of patent eligible subject matter,” its chief competitor, China, has “broadened its rules” to attract innovation (Cohen, p. 2).
China’s “technicity (technical solution) test” and its holistic evaluation of claims create “relatively straightforward drafting pathways which also appear more welcoming to well-drafted patent claims” (Cohen, p. 9). This stands in stark contrast to the U.S. system, where eligibility often depends on “careful claim drafting” and “minor changes will make a patent ineligible” (Cohen, p. 8). Cohen says that the data shows the result of this divergence: Cohen cited a study showing that 1,310 U.S. patent applications abandoned under the Alice-Mayo framework were granted in China or Europe (Cohen, p. 10). Furthermore, from 2019 to 2024, “China’s AI patent filings... nearly tripling in volume” while U.S. filings stagnated (Cohen, p. 11).
This “patent eligibility instability,” Cohen argued, has led to a “decline in investment in diagnostics” and other critical fields, ultimately undermining America’s ability to compete (Cohen, p. 15).
The Path Forward
The testimonies of Iancu, Kappos, and Cohen, while different in their focus, are powerfully complementary. Iancu’s legal critique explains the structural source of the problem. Kappos’s economic warning details its damaging effects on domestic innovators. Cohen’s geopolitical analysis reveals the international consequences for U.S. competitiveness. Together, they form a multi-faceted argument that the current system is failing on legal, economic, and strategic grounds.
The primary benefit of PERA would be to restore a clear statutory standard that encourages investment and disclosure. By creating a stable legal foundation, the bill aims to reverse the flight to trade secrecy and realign the U.S. with its global competitors.
Opponents, however, worry that PERA might open the door to patents on abstract ideas. The bill’s authors have included specific exclusions for business methods and natural phenomena to prevent this, but the ultimate effectiveness of these guardrails may likely depend on their judicial interpretation. The challenge is to fix the problems of the last decade without creating new ones.
The message from these three IP leaders is clear: the status quo is untenable. Their distinct but interconnected arguments illustrate that judicially created exceptions have destabilized patent law, harming innovation at home and eroding America’s competitive edge abroad. PERA represents a crucial legislative effort to restore the clarity and predictability our innovation economy demands.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.