NEWSLETTER ARCHIVE
Volume 49, Issue 1
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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).
II. The Need to Amend 35 U.S.C. § 101
One could reasonably argue that legislation to overturn the Mayo-Alice approach should not be necessary. Existing provisions of law already establish guidance for identifying a claimed invention that is ineligible for patenting. If correctly applied, that guidance should be sufficient.
Basic guidance is found in U.S. Constitution, Article I, Section 8, Clause 8: As traditionally interpreted, that clause gives Congress power to promote progress of “useful arts” by securing to inventors the exclusive right to their discoveries. In exercising this power, Congress provided further guidance in the current version of 35 U.S.C. § 101, enacted in 1952: § 101, titled “Inventions patentable”, extends patentability to a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, . . .” that meets the conditions and requirements of Title 35, U.S.C.
Despite this seemingly clear guidance, the U.S. Supreme Court has recognized several exceptions to patent eligibility that do not find explicit support in the statute. Long before adopting the Mayo-Alice approach, the Court had carved out exceptions for laws of nature, natural phenomena, and abstract ideas. Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). If these exceptions were contrary to Congress’ intent in 35 U.S.C. § 101, Congress could have responded with statutory amendments to override them, but Congress has not done so. The Supreme Court may interpret such acquiescence by Congress as strengthening the stare decisis effect of the Court’s statutory interpretation. Flood v. Kuhn, 407 U.S. 258, 283-284 (1972); but see Johnson v. Transportation Agency, 480 U.S. 616, 672 (1987) (Scalia, J., dissenting). If the Supreme Court’s decisions adopting the Mayo-Alice approach are allowed to stand without Congressional action to override them, their stare decisis effect will almost certainly be strengthened. Therefore, for those who believe that the Mayo-Alice approach is seriously damaging the U.S. innovation economy, Congressional action is urgently needed.
Congressional action to override the Mayo-Alice approach could take several forms. Since the Mayo-Alice approach is based on implicit exceptions the Court has found in 35 U.S.C. § 101, it follows that an amendment to § 101 would be one straightforward way to override the Mayo-Alice approach. Accordingly, AIPLA and IPO have proposed amended versions of § 101.
III. The AIPLA and IPO “Human Mind” Proposals
The amended versions of 35 U.S.C. § 101 proposed by AIPLA and IPO have similar structures: Each includes a first subsection (a) that closely follows the existing language of 35 U.S.C. § 101; each includes a second subsection (b) setting forth sole exceptions (AIPLA) or a sole exception (IPO) to subject matter eligibility; and each includes a third subsection (c) titled “Sole Eligibility Standard” providing that patent eligibility shall be determined without regard to several other statutory provisions and factors.
Subsection (b) of the AIPLA version reads:
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.
Subsection (b) of the IPO version similarly reads:
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.
From the literal wording, one might infer that enactment of either proposed version would repeal or override all subject matter exceptions to patent eligibility other than those set forth in proposed new 35 U.S.C. § 101(b). On the other hand, the exceptions set forth in each version of new subsection (b) address only the judicially-recognized exceptions for laws of nature, natural phenomena, and abstract ideas, and do not address other duly enacted exceptions based on subject matter: For example, 42 U.S.C. § 2181(a) provides that no patent shall be granted for any invention or discovery “useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” Also, an apparently uncodified provision of the America Invents Act (AIA) provided that “no patent may issue on a claim directed to or encompassing a human organism.” The Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, sec. 33(a), 125 Stat. 284 (September 16, 2011). And 35 U.S.C. § 287(c) provides that infringement remedies are not available against a medical practitioner’s performance of a “medical activity” as defined in the statute. Because these exceptions for specific subject matter areas are not overturned by either version of proposed new 35 U.S.C. § 101(b), a better interpretation is that the new, general exceptions do not repeal previously enacted, specific exceptions.
Extensive explanation accompanied the AIPLA and IPO proposals, providing further guidance on how they should be interpreted. AIPLA issued a report dated May 12, 2017 and titled “AIPLA Legislative Proposal and Report on Patent Eligible Subject Matter”, while IPO issued a report dated February 7, 2017 and titled “Proposed Amendments to Patent Eligible Subject Matter Under 35 U.S.C. § 101”. The AIPLA and IPO reports strongly imply that the final clauses, each of which included the expression “solely in the human mind”, were intended to address the abstract idea exception to patent eligibility, the exception that was expanded upon by the Alice decision.
The AIPLA report stated:
The exception for circumstances where the claimed invention as a whole “can be performed solely in the human mind” provides an appropriate, clear, historically-grounded basis to determine patent eligibility, applying only to purely mental steps.37 This language responds to Supreme Court law by drawing a clear administrable line that distinguishes claims directed purely to abstract ideas, i.e., claimed steps occurring solely in the human mind. Importantly, because the AIPLA proposal abandons any inquiry into the “abstract” nature of claims, patent eligibility would no longer be the tool for policing method claims that are implemented by conventional or routine hardware, be it a general purpose computer or pencil and paper. The exception, for example, does not apply when any part of a claim requires the use of a physical device such as computer hardware or involves a physical test such as a diagnostic assay. It thus only excludes claims describing purely mental calculations or associations. In this way, it also reflects the historical principle, appropriately applied, that any claim to a machine or transformation of matter represents eligible subject matter. [footnote omitted]
IV. Meaning of “Solely In the Human Mind”
The English word “mind” and its counterparts in other languages have long played a role in intellectual debate. The 17th Century philosopher René Descartes argued, for example, that mind is a non-physical substance, in contrast with physical body. Descartes’ view is an example of dualism, which is often contrasted with monism; an example of monism is the belief in the existence of only one kind of substance, e.g. mind or matter. The philosophical problem of the relationship between the human mind and body is often referred to as the “mind-body problem”. See, e.g., Skirry, J., “René Descartes: The Mind-Body Distinction”, The Internet Encyclopedia of Philosophy, accessed January 30, 2018.
In probing the mind-body problem, philosophers also frequently discuss consciousness. See, e.g., Gennaro, R.J., “Consciousness”, The Internet Encyclopedia of Philosophy, accessed January 30, 2018. While the precise relationship between mind and consciousness is a matter of philosophical debate, “the mind” sometimes refers to the part of a human being (or, in some cases, another organism) that has consciousness. On the other hand, in Henrique, G., “What is the Mind?”, psychologytoday.com, December 22, 2011, a contemporary psychologist argued that “consciousness” and “mind” are not synonymous because “consciousness is only a small portion of mental processes”.
In addition to its role in academic circles, the word “mind” also has more quotidian uses. The following examples are from a representative definition on merriam-webster.com:
“2 a: the element or complex … of elements in an individual that feels, perceives, thinks, wills, and especially reasons… ""b: the conscious mental events and capabilities in any organism ""c: the organized conscious and unconscious adaptive mental activity of an organism”
In short, the word “mind” has many possible meanings. The expression “solely in the human mind” could therefore take its meaning from any of several meanings of the word “mind”, possibly including its meanings in previous court cases in which patent eligibility was at issue. See, for example, cases discussed in Sachs, R., “The Mind as Computer Metaphor: Gottschalk v Benson and the Mistaken Application of Mental Steps to Software Inventions”, AIPLA Spring Meeting, 2016.
A cursory Internet search suggests that the full expression “solely in the human mind” was new in U.S. patent law prior to the AIPLA and IPO proposals. More recently, however, Federal Circuit Judge Linn used the expression “solely in the human mind” in his dissenting opinion in Smart Systems Innovations, LLC v. Chicago Transit Authority, [2016-1233] (October 18, 2017), Dissent, p. 7: “Claims directed not merely to basic building blocks of scientific or technological activity but instead to innovative solutions to real problems that result from human activity and are not capable of performance solely in the human mind should be fully eligible for patent protection and not lightly discarded.” (Emphasis added). Like the AIPLA and IPO proposals, Judge Linn did not cite a case or other legal authority that includes the term “solely in the human mind”.
Although neither of the proposals included a clearly identified definition of “solely in the human mind”, the reports provided clues as to what this expression was intended to mean. The above-quoted portions of the AIPLA report, for example, employed the following terms as synonymous with “solely in the human mind”: “purely mental steps”; “abstract ideas”; “purely mental calculations or associations”; and, in footnote 37, “[P]urely mental acts . . .” The IPO report similarly employed the term “purely mental phenomena” as synonymous with “solely in the human mind”. It appears that the two reports intended the same meaning for “solely in the human mind”, a meaning that resembles the term “purely mental”. As noted above, “the mind” sometimes refers to the part of a human being that has consciousness, suggesting that an unconscious or subconscious mental activity might not be “solely in the human mind”. We have, however, found nothing in the AIPLA or IPO reports suggesting that “solely in the human mind” was intended to exclude unconscious or subconscious mental activities.
While not excluding the unconscious or subconscious, the above-quoted portions of the AIPLA report do exclude several other items that are apparently not “solely in the human mind”: —conventional or routine hardware; —a general purpose computer; —pencil and paper; —a physical device; —computer hardware; and —a physical test such as a diagnostic assay.
A critic of the AIPLA and IPO proposals could conceivably argue that the expression “solely in the human mind” is too ambiguous, given the many possible meanings of “mind” and the lack of a definition in the case law or in the proposed amended statute. But a proponent could respond that the expression “solely in the human mind” is advantageous because it is not saddled with an established meaning in the patent field—its intended meaning can therefore be supplied by a definition in, e.g., the amended statute or its legislative history. The latter argument may be especially persuasive to patent professionals who are accustomed to being their own lexicographers. MPEP 2111.01.
One possible definition is that an activity is “solely in the human mind” if the activity occurs entirely in the nervous systems of one or more human beings without any external physical action other than direct oral communications. This initial definition might be too broad, however, because a number of current technologies modify structure and/or operation of a human nervous system, e.g. through brain implants or other measures; to avoid the issue of nervous system modification, an alternative definition could be obtained by changing the term “nervous systems” in the above initial definition to “unmodified nervous systems”.
While the above definitions are somewhat speculative, they are a useful start, as can be seen by employing them in comparing the AIPLA and IPO proposals.
V. Comparing AIPLA and IPO Proposals
Although the AIPLA and IPO proposed versions of 35 U.S.C. § 101(b) both include the expression “solely in the human mind”, the proposals also have important differences. In particular, the clauses “can be performed solely in the human mind” (AIPLA) and “exists solely in the human mind” (IPO) potentially have significantly different effects when applied to claimed inventions.
On a fair interpretation of the AIPLA proposal, a claimed invention “can be performed solely in the human mind” if there is at least one implementation of the claimed invention that can be performed solely in the human mind. In contrast, on a fair interpretation of the IPO proposal, a claimed invention “exists solely in the human mind” if every implementation of the claimed invention occurs solely in the human mind.
This difference between the two proposals emerges more clearly when one employs the above initial and alternative definitions of “solely in the human mind”. Suppose, for example, that the claimed invention as a whole is a combination of components that obtain prime numbers greater than ten. One implementation of this invention would be a human nervous system thinking of the number eleven, the number thirteen, etc., but another would be a computer programmed to obtain the number eleven, the number thirteen, etc. Therefore, this claimed invention would not be patent eligible under the AIPLA proposal because at least one implementation can be performed solely in the human mind, but the same claimed invention would be patent eligible under the IPO proposal because at least one implementation occurs in programmed computers rather than solely in the human mind.
Many other examples can be found in which the two proposals would produce different patent eligibility results. Of particular interest, however, are inventions involving modifications of nervous systems. A simple example would be a claimed invention that, as a whole, is a living brain with an implanted device that improves operation A of the brain. One implementation of this invention would be a living human brain that includes the implanted device and therefore has improved operation A, while another implementation would be a living mouse brain that includes the implanted device and similarly has improved operation A. As above, this invention would be patent eligible under the IPO proposal because at least one implementation occurs in a mouse brain rather than in a human nervous system. This invention would not, however, be patent eligible under the AIPLA proposal if “solely in the human mind” encompasses a modified human nervous system—in that case, the invention could be performed solely in the human mind; but if “solely in the human mind” only includes unmodified human nervous systems as in the above alternative definition, this invention would be patent eligible under the AIPLA proposal because it could not be performed in an unmodified human nervous system.
Considering these and other examples, one could argue that one proposal is advantageous over the other because of differences in how the proposals serve underlying policies. A policy against patenting any claim that could be enforced against a human who is merely thinking or speaking would be better served by the AIPLA proposal, which excludes from patentability inventions for which any implementation would be a human who is merely thinking or speaking (or, under the alternative definition, a human who is merely thinking or speaking with an unmodified nervous system). But a policy of expanding the scope of patent-eligible inventions would be better served by the IPO proposal, which excludes fewer inventions from being patent eligible. And a policy against patenting basic tools of scientific and technological work (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) would be better served by the AIPLA proposal, which prevents such patenting in a larger set of cases; the IPO proposal would only prevent patenting of tools that “exist solely in the human mind”.
VI. Conclusion
The AIPLA and IPO proposals both respond to an urgent need—to override the Mayo-Alice approach to patent eligibility and prevent further damage to the U.S. innovation economy. Both proposals introduce the expression “solely in the human mind” to patent law; for greater clarity, this expression could be defined either in the statute itself or in its legislative history. The choice between the two proposals may depend on what underlying policy has priority; for example, the AIPLA proposal would better prevent patents on basic tools of scientific and technological work. NOTES: —The views expressed in this article are solely those of the author, and should not be attributed to Bergman & Song LLP, to any of its clients, or to any other organization or individual.
—The author gratefully acknowledges helpful communications with Bruce Sunstein, Gary Cohen, Paul Morgan, Ashok Mannava, and Robert Sachs.
Footnote 37 provided: “See, e.g., In re Heritage, 32 C.C.P.A. 1170, 1174 (1945) (‘[P]urely mental acts are not proper subject matter for protection under the patent statutes.’).”
A detailed table in the IPO report set forth reasons for most of the language in its proposal. Regarding the phrase “that exists solely in the human mind”, a paragraph in the table explained:
The language here thus returns the abstract idea exception back to its original intent, the exclusion of purely mental phenomena. This makes sense from a policy standpoint, because if mental phenomena were patent eligible, a person could infringe simply by thinking or speaking—anomalous outcomes, surfeit with problems of proof (how does one prove that a person had an infringing thought), let alone First Amendment issues.
As noted above, both proposed versions of 35 U.S.C. § 101(b) would address the abstract idea exception with a new clause that includes the expression “solely in the human mind”. Therefore, in order to understand the effect of the new clauses, it is important to examine the meaning of this key expression.
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