A recent proposal by the Intellectual Property Owners Association for amending 35 U.S.C. § 101 to attempt to clarify the law of patent-eligibility has garnered a lot of attention. In essence, the IPO proposes to curtail, if not eliminate, the Mayo/Alice “abstract idea” test. The clear intention, and effect, of the proposal would be to make it harder for the USPTO, and the courts, to reject and invalidate software patent claims. But as a practitioner, my interest in the proposal lies in whether it would enhance predictability of patent-eligibility analysis, thereby providing clients with better bases for making business decisions predicated on whether patent claims do – or do not – recite eligible subject matter. Does the IPO's proposal really further this goal?
The IPO’s proposed amendment to Section 101 is as follows:
101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any
new anduseful process, machine, manufacture, orcomposition of matter, or any new anduseful improvement thereto, may obtainshall be entitled to a patent for a claimed invention thereof , subject only to the exceptions, conditions, and requirements ofset 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.
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.
Some commentators laud the proposal to do away with the abstract idea test, while others fear a re-opening of the patent floodgates under which anything under the sun made by man would once again be patentable. Yet another commentator lauds the goal of clarifying the law of patent-eligibility, and suggests ways to improve the IPO’s proposal.
These commentators reflect two sides of a debate that is rife with politics and emotion. Some in the patent community are understandably incensed because some genuine innovations have been deemed unpatentable after Bilksi, Mayo, and Alice. Some in the software community, outraged by the many overly-broad software and business methods patents that were issued in the U.S. after the State Street Bank case, are doubtless concerned about the possibility of rolling back the recently-evolved limitations on patent-eligibility.
But what everyone should be concerned about is a change to the law that does not make the law more clear, that does not make results more predictable. As the PatentlyO post on the IPO’s proposal suggests, it is hard to imagine a patent claim where all elements “exist in nature independently of and prior to any human activity.” Thus, if the above were enacted into the statute, patent-eligibility analyses would generally focus on whether claimed subject matter “exists solely in the human mind.”
I am not, I hope, the kind of person who quibbles about the meaning of the word “is,” yet I have to ask whether “exists solely in the human mind” is any less subjective – and any less subject to different interpretations by the courts and the USPTO – than “abstract idea.” A lot of software algorithms exists solely in the human mind, but then they are coded up, and they exist in a computer. Are these in our out under the IPO’s proposal? What is the human mind capable of, and what necessarily exists outside of the human mind, i.e., in a computer?
I could go on but you get the point – one has to question whether any subjective line-drawing can clarify the law of patent-eligibility. One approach (very unlikely to ever be adopted) would be to eliminate Section 101 entirely. Instead of patent-eligibility we would simply worry about prior art and clarity. Another approach (equally unlikely to ever be adopted) would be to amend the statute to say that all software was presumed patentable, or, conversely, that software inventions simply are not patentable. But beyond these two extremes it seems very difficult to find a workable middle ground. Which is why the conundrum of Alice is likely to be with us for some while.