United States Capitol Building

Is It Time to Amend the Test for Patent Subject Matter Eligibility?

On January 29, 2017, the Board of Directors of the Intellectual Property Owners Association (IPO) recommended a legislative amendment of 35 U.S.C. § 101 of the U.S. Patent Statute. This section of the patent law serves as the gate keeper, with respect to subject matter eligibility, for patent protection within the United States patent system. The resolution put forth by the IPO addresses the uncertainty created from the effects of the Alice/Mayo decisions by the United States Supreme Court.

The recommended legislative solution would amend § 101 by forming three subsections: § 101(a), § 101(b), and § 101(c). Proposed subsection (a) is an amended version of the original § 101 language, while proposed subsection (b) and subsection (c) would form entirely new portions of the patent statute. The proposed language (with markups) from the IPO reads as follows:

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

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.

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.

With respect to their proposed amendment of § 101, the IPO stated:

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.

To those familiar with the patent law and recent court decisions, it is clear that the IPO’s proposal is an attempt to lessen the impact of the Supreme Court’s decision in Mayo v. Prometheus. Prior to Mayo, the question of novelty was not allowed in the analysis of subject matter eligibility, which is a standard clearly spelled out in Diamond v. Dehr. Further, the patent statute clearly states that the question of novelty is to be analyzed under § 102; the question of non-obviousness to be analyzed under § 103. The Mayo decision has turned patent jurisprudence on its head and, in the eyes of many, improperly injected a novelty-based test into § 101 of the patent statute. Consequently, Mayo has been relied upon in a number of recent suspect patent eligibility cases, many of which involve patent claims on software-related technologies.

Mayo has caused this disruption by forcing patent examiners and judges to consider, in claims involving a judicial exception, such as an abstract idea, law of nature or natural phenomenon, whether the claims add “significantly more” beyond conventional steps. As a result, a test that should reside in § 102 (novelty) of the patent statute has percolated into § 101. To compound the matter, the standard of “significantly more” is not defined by the Mayo court and is not well understood by the patent examining corps of the USPTO, judges or patent practitioners. Even further, when the “significantly more” standard is invoked against a patent application under the new Mayo-based § 101 analysis, patent examiners are not required to point to prior art to prove that the new invention is not “significantly more” than the allegedly patent-ineligible concept itself. The result is confusion across the entire patent community including examiners, judges, patent practitioners, inventors, patent owners and investors when it comes to the validity of some software-related patent claims

The language proposed by the IPO would remove the exception associated with an abstract idea (something the Supreme Court has never defined), while maintaining the exception associated with subject matter found in “nature.” Further, the proposed language of § 101(c) would disallow examiners and judges from importing portions of § 102, § 103 or § 112 in their subject matter eligibility analysis.

It is noted that the IPO is not alone in their belief that § 101 of the patent statute needs an overhaul. In fact, in March of 2016, former USPTO Director David Kappos went so far as to suggest the United States abolish § 101 altogether because decisions such as Mayo and Alice have made a “real mess” of the U.S. patent system. Kappos noted that European and Asian patent systems lack laws/rules analogous to § 101 of the U.S. Patent Law.

Time will tell whether 2017 will provide a political climate suitable for patent eligibility reform. While many in the patent community would like to see improved clarity with respect to the subject matter eligibility standard of § 101, given the state of current events and the political power of those opposing reform of § 101, passage of the IPO’s proposal during this Congressional session seems unlikely.

Suiter Swantz IP is a full-service intellectual property law firm serving all of Nebraska, Iowa and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark or copyright matters and would like to speak to one of our patent attorneys please feel free to contact us.