REINVENTING 35 U.S.C. 101 – ARE WE STILL MISSING THE POINT?

12.06.2017

By Lawrence Hoffman

The stakeholders in the patent eligibility game have been busy this year thinking up ways to scuttle the mess created by the U.S. Supreme Court in its 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. and it 2014 decision  Alice Corp. v. CLS Bank.

There are three proposals on the table. All three call for revision of § 101 of the U.S. patent statute. The first one, published in February came from the Intellectual Property Owners (IPO) group. At the end of March, the IP Law Section of the American Bar Association  presented a proposal (the “ABA proposal”). And on May 12, the American Intellectual Property Law Association (AIPLA) came out with its own proposal.

Amending § 101 is the right approach since that’s underlying cause of the problem. Unlike the laws in other countries, § 101 and its predecessors have only said what kinds of subject matter come within the scope of patent law. In its present form, §101 lists four patent eligible categories: processes, machines, manufactures, and compositions of matter. These categories don’t differ much from the corresponding ones in other countries, but the laws elsewhere also list subject matter which is not patent eligible within the eligible categories.

Exceptions within the eligible categories exist in the U.S. as well, they are not in the Patent Act. Instead, beginning in the 1800’s, they were articulated by the  Supreme Court in its decisions, and they are still only in the case law to this day. We therefore have no guidance from Congress to tell us how to recognize them when we see them and what to do about them.

The exceptions themselves are simple to state: laws of nature, natural phenomena (which include naturally occurring materials), and abstract ideas are not eligible to be patented. The Court has carved out these exceptions, it explains, to assure that patents do not preempt the basic tools of scientific and technological work and thereby hinder, rather than promote the progress of the useful arts as the U.S. Constitution requires.

The first two exceptions are straightforward, but the third one is another story. For one thing, what’s the difference between an “idea” and an ”abstract idea”. Moreover, at bottom, all inventions are based on ideas.

Disregarding the fact that the Supreme Court has not defined the term “abstract idea”, we have to deal with the real-world fact that inventions are the embodiments of ideas. For this purpose, the Supreme Court in Mayo and Alice, the Court declared a two-part test for patent eligibility. This is most often referred to as the “Alice test” but interchangeably also as the ”Mayo test” or even as the ”Mayo-Alice test”.

Whatever you call it, as articulated by the Court:

First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, [w]hat else is there in the claims before us? To answer that question, we consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application. We have described step two of this  analysis as a search for an ‘inventive concept—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

Most practitioners and other would-be pundits think the Supreme Court’s Alice test is a disaster, especially as to inventions directed to abstract ideas. Almost everyone agrees that it needs to be replaced, the method of choice being to amend § 101.

Before we analyze and compare the three proposals, I need to point out that I see a fundamental problem in all of them: they do not take account of the Constitutional basis for granting patents, namely the promotion of the “useful arts”. I will have a bit more to say about this below and  discuss it in detail in an article (here) on our website, but for now, let’s look at the three proposals side-by-side:

IPO PROPOSAL ABA PROPOSAL AIPLA PROPOSAL
(a) ELIGIBLE SUBJECT MATTER

Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

 

(a) Eligible Subject Matter.- Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, shall be entitled to obtain a patent on such invention  or discovery, absent a finding that one or more conditions or requirements under this title have not been met.

 

(a) Eligible Subject Matter.—Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.
101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY

A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

 

(b) Exception.- A claim for a useful process, machine, manufacture, or

composition of matter, or any useful improvement thereof, may be denied

eligibility under this section 101 on the ground that the scope of the exclusive rights under such a claim would preempt the use by others of all practical applications of a law of nature, natural phenomenon, or abstract idea. Patent eligibility under this section shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims upon consideration of those claims

as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

 

101(c) SOLE ELIGIBILITY STANDARD

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

 

Eligibility under this section 101 shall not be negated based on considerations of patentability as defined in Sections 102, 103 and 112, including whether the claims in whole or in part define an inventive concept. (c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

 

 

As may be seen, all three proposals contain sub-parts (a) that largely follow present § 101 with only minor changes. The three proposals also include sub-parts (b) that define exceptions to what is stated in the respective sub-parts (a). The IPO and AIPLA proposals also contain sub-parts (c) to the effect that § 102, 103, and 112 considerations are not to be taken into account in determining eligibility. The ABA proposal includes a section in sub-part (b) to the same effect.

So how are the three proposals different? In my mind, the IPO and AIPLA proposals are not really different, except that I think the AIPLA’s use of the phrase “can be performed solely in the human mind” in sub-part (b) is better than the corresponding phrase “exists solely in the human mind” in the IPO version.

I do think it is good that neither makes reference to “abstract ideas”. I have never understood the difference between an abstract idea and any other kind of idea.

The main problem I see with the IPO and AIPLA proposals (apart from the fact that neither is grounded on the Constitutional imperative) is that neither addresses eligibility of inventions directed solely to laws of nature. It’s not clear why this was done. Perhaps the groups consider a law of nature to be something that “exists in nature independently of and prior to any human activity”. If so, there doesn’t seem to be any good reason not to mention it specifically. If that is not the intention, why should claims directed to things that exist in nature be ineligible, but claims directed to laws of nature not also be ineligible?

The real difference is in how the exclusions are articulated in the ABA proposal. The ABA proposal only states a single exclusion based on preemption of free access to all the Supreme Court exclusions:

a claim…may be denied eligibility on the ground that the scope of the exclusive rights under such a claim would preempt the use by others of all practical applications of a law of nature, natural phenomenon, or abstract idea. Patent eligibility under this section shall not be negated when a practical application of a law of nature, natural phenomenon, or abstract idea is the subject matter of the claims upon consideration of those claims as a whole, whereby each and every limitation of the claims shall be fully considered and none ignored.

I think this approach is problematic because it does not make denial of eligibility mandatory, because it suggests lack of a practical application as the sole criterion for invoking the exception, and because it, too, ignores the constitutional issue.

Perhaps use of the phrase “may be denied eligibility” is not intended to suggest that denial of eligibility should be optional, but if that is the intent, why create such an option without any suggestion as to how it should be implemented?

The ABA’s focus on practicality is a much more serious problem. According to the American Heritage® Dictionary of the English Language, Fifth Edition defines the word “practical” as:

  1. Of, relating to, governed by, or acquired through practice or action, rather than theory or speculation
  2. Manifested in or involving practice
  3. Capable of or suitable to being used or put into effect; useful
  4. Concerned with the production or operation of something

The first two clearly don’t provide anything helpful. The third one really doesn’t seem to either; the law already requires utility. To me, the fourth one is no better than the “something more” requirement of the Alice test. There’s never been any doubt that manufacturing processes are patent eligible, but it’s hard to imagine a process claim (business method of otherwise) that doesn’t concern operation of something, if only a programmed general purpose computer.

Does the ABA intend all program implemented inventions to be patent eligible? If so, I think they have made a mistake, despite what the Supreme Court has said. For example, I am virtually certain that methods of commerce were not regarded as useful arts by the drafters of the Constitution. A detailed historical analysis and support for my view may be found in a two-part article posted on our website (here).

In short, while I fully agree that the Alice test needs to be replaced, I believe that a workable test or criterion for patent eligibility must correlate directly with promotion of “useful arts”. The article on our website offers a suggestion for how this might be done.

About the author: Larry Hoffman has a B.S. in Electrical Engineering and Comp. Sci. from Massachusetts. Institute of Technology and a J.D. from the George Washington University School of Law. He has been a lawyer since 1965 specializing in IP law and product liability defense. He is registered to practice before the U.S. PTO, the U.S. Court of Appeals for the Federal Circuit and the state and federal courts in New York, Maryland, and the District of Columbia. His work has included preparation and prosecution of patents in countries throughout the world, and counseling on IP and product safety matters. He has been involved in the trial of close to 100 lawsuits of various kinds. You can reach him at Lawrence@ipatent.co.il.

 

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