Volume 49, Issue 1
Going Out of Our Minds for Patent Eligibility
By James T. Beran Of Counsel, Bergman & Song LLP
James T. Beran
I. Introduction
More than five years ago the U.S. Supreme Court dramatically changed its approach to patent eligibility of laws of nature in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Although Mayo involved drug treatment techniques, the Court soon took a very similar approach to patent eligibility of abstract ideas in a case involving computer-implemented risk-management, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.__ (2014); Alice involved computerized trading platform technology, but its holding has been applied to a broad range of technologies, especially to software.
The Court’s approach in Mayo, Alice, and related cases (“the Mayo-Alice approach”) can be summarized as follows: In step 1, decide whether a patent claim is directed to one of the judicially recognized exceptions to patent eligibility, i.e. a law of nature, a natural phenomenon, or an abstract idea; if so, in step 2, decide whether the claim supplies an inventive concept by adding significantly more than the judicial exception, i.e. does the claim include additional elements that, considered separately or as an ordered combination, transform the nature of the claim into a patent-eligible application of the judicial exception? United States Patent and Trademark Office, Patent Eligible Subject Matter: Report on Views and Recommendations from the Public, 2017, p. 8.
Under the Mayo-Alice approach, the Court of Appeals for the Federal Circuit usually resolves the patent eligibility issue against claims. In particular, only a few panels of the Federal Circuit have held claims directed to computer-implemented inventions to be patent eligible. Following the courts, the U.S. Patent and Trademark Office (PTO) now frequently relies on patent ineligibility to reject patent applications during examination and to invalidate issued patents during proceedings of the Patent Trial and Appeal Board (PTAB). In short, the Mayo-Alice approach makes it more difficult to obtain a patent and jeopardizes patent protection once obtained.
The stakes in patent eligibility cases are often high, especially for companies with valuable patents on medical and pharmaceutical inventions. Accordingly, those companies and other patent owners are motivated to challenge the Mayo-Alice approach. But prospects for further Supreme Court decisions overturning Mayo and Alice appear slim. Prominent intellectual property associations have therefore suggested legislation to override Mayo and Alice. For example, the American Intellectual Property Law Association (AIPLA), the American Bar Association Section of Intellectual Property Law, and Intellectual Property Owners Association (IPO) have all developed proposals that would amend 35 U.S.C. § 101, the statutory provision most relevant to patent eligibility.
This article examines parts of the AIPLA and IPO proposals relating to the abstract idea exception. Specifically, these two proposals provide in part that a claimed invention would be patent ineligible only if the claimed invention “can be performed solely in the human mind” (AIPLA proposal) or “exists solely in the human mind” (IPO proposal).