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Goodbye Alice? Proposed changes to US subject matter eligibility test move away from recent court decisions

Date: 27 February 2017
Author: Beata Khaidurova
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A recent proposal by the Intellectual Property Owners Association (IPO) to amend 35 U.S.C. § 101 could bring positive change to applicants attempting to acquire patent rights for computer implemented inventions in the US.

The proposal comes after court decisions such as Alice Corp Pty v CLS Bank Int’l (2012) (Alice Corp) blurred the lines between patentability and obviousness, requiring an assessment of the “inventive concept” to be performed when evaluating subject matter eligibility of an application, and resulting in a significant number of computer-related inventions being found invalid for lack of patentable subject matter.

Obviousness should not be considered at the time of patentable subject matter consideration

The proposed amendments to 35 U.S.C. § 101 steps away from the approach adopted in court decisions such as Alice Corp and Mayo v. Prometheus Laboratories Inc (2012), by clearly stipulating that obviousness should not be considered at the time of considering patentable subject matter.

An invention is ineligible if it exists in nature independently and prior to human activity

Instead, a single test for determining eligibility of subject matter in patent applications is proposed, where a claimed invention is ineligible if and only if the claimed invention “exists in nature independently of and prior to any human activity, or exists solely in the human mind”. A marked up copy of the proposed amendments to 35 U.S.C. § 101 is set out below:

101 Inventions patentable

101(a) ELIGIBLE SUBJECT MATTER

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, shall be entitled to thereof, may obtain a patent for a claimed invention thereof therefore, subject only to the exceptions, conditions, and requirements set forth in this Title of 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.

§ 101(a) would reproduce some of the wording of current § 101, with some significant changes. In particular, the instances of the word “new” would be deleted from the requirement that a patent be for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto”, and the section would stipulate that the subject matter eligibility would be “subject only to the exceptions, conditions, and requirements” set out in the Title.

Proposed § 101(b) goes on to set out a single exception to subject matter eligibility, being that “the claimed invention exists in nature independently of and prior to any human activity, or exists solely in the human mind”.

A shift away from considerations of what is “new”, “inventive” or “obvious”

These proposed changes clearly seek to move subject matter eligibility analysis away from considerations of what is “new” , “inventive” or “obvious”, which is emphasised by the addition of § 101(c). Proposed § 101(c) specifically states that patent eligibility 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”.

Instead, the proposed new test implemented by § 101(b) seems to be a simple matter of ruling out discoveries, ideas, and mental processes as patent ineligible, and allowing all other subject matter that can be considered a “useful process, machine, manufacture, composition of matter, or any useful improvement thereto” as recited in § 101(a).

Adoption would be a positive step forward for computer implemented invention patentability

If adopted, this amendment would be a positive step forward for those seeking to patent computer implemented inventions, including computer implemented business methods, by removing the requirement that the claims not be directed to laws of nature, natural phenomena, or abstract ideas. Since Alice Corp, applications for computer related subject matter have often been rejected under § 101, often because only well-known computing features and functions are created.

Where an application does recite well-known computing steps, the proposed shift of § 101 would see this issue caught under § 103, which deals with obviousness of the claimed invention. This would be resolved by determining whether or not the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art.

It remains to be seen whether the proposed amendment is implemented, and how the new language might be interpreted by the courts.

Tags:  35 U.S.C. § 101, Alice Corp, patentability, obviousness, inventive concept, subject matter eligibility, computer-related inventions, Beata Khaidurova
 
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