Under the Patent Act, not all inventions qualify as “patentable subject matter.” Section 101 of the Patent Act addresses the issue of which types of inventions will be considered for patent protection.
However, despite the plain language and the broadly permissive nature of § 101’s subject matter eligibility principles, the Supreme Court has recognized three categories of subject matter outside the eligibility bounds of § 101—laws of nature, physical phenomena (the presently preferred term is “natural phenomena”), and abstract ideas.
For years the debate has raged on over whether computer-implemented inventions should be patentable subject matter.1 In 2014, the Supreme Court’s landmark “Alice” decision brought to the forefront Section 101 of the Patent Act, which governs what types of inventions are eligible for patent protection.
Section 101 of the Patent Act broadly defines patent-eligible subject matter as “any” new and useful, “process, machine, manufacture, or composition of matter,” or “improvement thereof.” Notwithstanding the plain text, the Supreme Court has read into patent law limitations the legislature had not expressed and judicially created three categories of subject matter outside the eligibility bounds of § 101—laws of nature, natural phenomena, and abstract ideas. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (“Alice”), the Supreme Court articulated a two-step test for examining patent eligibility when a patent claim is alleged to involve one of these three categories of subject matter, referred to in the Alice decision as “patent-ineligible concepts.”
In Alice, the Supreme Court held that the two-part analytical framework for determining the Section 101 patent-eligibility of a patent claim, which the Court previously articulated in the Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (“Mayo”) decision on the patentability of a diagnostic method, applied to computer-implemented inventions, making it more difficult to determine patent subject matter eligibility.
The Supreme Court recognized, however, that “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Alice, 573 U.S. at 217 (alteration in original) (quoting Mayo at 71). “Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.” Id. Rather, “applications” of abstract concepts “to a new and useful end . . . remain eligible for patent protection.” Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
At step one of the Alice/Mayo framework, the court must first “determine whether the claims at issue are directed to . . . [a] patent-ineligible concept,” such as an abstract idea. Alice, 573 U.S. at 217.
If a claim is “directed to” an abstract idea, the court proceeds to step two, where the court “must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. at 67–68).
The USPTO’s current eligibility guidance is found in the Manual of Patent Examination Procedure (MPEP) Sections 2103 through 2106.07(c).
Current confusion about Section 101 doctrine dates back to the U.S. Supreme Court’s 1972 decision in Gottschalk v. Benson, which was further refined by the Court’s 1978 decision in Parker v. Flook. During the Benson–Flook epoch, virtually no one submitted patent applications covering subject matter related to software inventions because software was believed to be unpatentable subject matter, in large part due to the decisions in Benson and Flook.
In 1981, in Diamond v. Diehr, the Supreme Court opened the door to the patentability of computer programs by ruling that controlling a physical process, by executing a computer program, did not preclude patentability of the invention as a whole. After Diehr, patent practitioners found that software could be patented so long as it was combined with another patentable process or machine, even if the software was the only novel feature.
The 2012 decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc. on the patentability of a diagnostic method effectively overruled Diamond v. Diehr, upending three decades of stable and predictable law described in Diehr in 1981. The decision in Mayo stated the Court’s precedents insist that a patentable application of a natural law must contain “elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (nonetheless, the Supreme Court has not explicitly defined what constitutes a sufficient “inventive concept”).
In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the Supreme Court held that the two-part analytical framework for eligibility analysis, which the Court previously articulated in the Mayo decision, applied to computer-implemented inventions, and this compounded the chaos surrounding patent eligibility law. In the post-Alice epoch, a groundswell of criticism has continued to grow regarding the jurisprudence for determining patent eligibility under Section 101, which appears to many patent experts (including practitioners, examiners, and leading judges) to have “fallen off the rails.”
Since the early twentieth century, at least ten Supreme Court cases have directly addressed the issue of patent-eligible subject matter.
Listed below are cases (since the Supreme Court’s Alice decision in 2014) where the U.S. Court of Appeals for the Federal Circuit held that the asserted claims were patent eligible—finding that the claims where not directed to an abstract idea, or that if so directed, the claims recited an “inventive concept.”