Time to Wake Up: Comparing Statutory Proposals to Escape Alice’s Looking Glass

By changing the word “art” to “process” in the 1952 Patent Act, Congress introduced one of the first changes to the statutory language of PSM since Thomas Jefferson penned the original in 1793. Diamond v. Chakrabarty, 447 U.S. 303 at 309 (1980). Since then, patent-eligible subject matter under 35 U.S.C. § 101 has remained unaltered by Congress.

However, over 200 years of judicial interpretation led to the development of specially created judicial exemptions from patentable subject matter – laws of nature, natural phenomenon, and abstract ideas. Nevertheless, patentable subject matter remained broad and applied in a limited way to prevent overbroad downstream effects. But in a recent line of decisions, the Supreme Court upended Patentable Subject Matter doctrine, introducing ‘the Alice two-step test.’ Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. Pty. Ltd. v. CLS Bank Int’l.

In the three years since the Alice decision, commentators have written extensively on the negative effects of the new doctrine in the context of software and life science patents. And, in response to the apparent ‘death knell’ sounded by the Supreme Court, Intellectual Property groups are now calling for Congress’ biggest §101 overhaul in history.

While there are many ideas for how §101 should be reformed, this post dissects three particularly visible proposals from the Intellectual Property Owners Association (hereinafter IPO), the American Intellectual Property Law Association (hereinafter AIPLA), and the American Bar Association Section of Intellectual Property Law (hereinafter IPL). These three proposals are demonstrative of how the critiques above percolate into practitioners’ proposals to clarify patentable subject matter.

While the text of every proposal can be accessed through the links above, the text of the IPO and IPL’s proposals are set out in Table 1 for demonstrative purposes. The text of the AIPLA proposal is similar the IPO’s proposal[i]. Some of the most notable features of the proposals include:

While subsection (a) of each proposal mostly tracks the historical language of §101, all three omit “new” from the historical text, which contains the word in two places. This change is a first pass at emphasizing that the novelty requirement should be dealt with under §102, rather than in patentable subject matter. Subsection (c) of the IPO and AIPLA proposals, and the second half of subsection (b) in the IPL’s, elaborates this emphasis. The IPO and AIPLA proposals take one further step in their proposed subsection (a): by placing the word “only” in the final clause the IPO/AIPLA attempt to preempt future judicially created tests for patentability.

Following these changes, all three organizations take a major step away from the historical text of §101 to introduce completely new subsections. Subsection (b) of all three proposals is designed to supersede any case law concerning exceptions to patentable subject matter, i.e. supersede the judicial exemptions. Since this subsection is intended to provide a guiding light away from Alice’s confusion, the bulk of each group’s accompanying materials is dedicated to explaining 101(b).

All three proposals explicitly state that their exceptions only apply when said exception can be stated about the claim as a whole. The language is a redress of the narrowing impact of Alice step one: it is intended to prevent courts from considering “the gist” of the invention in determining what a claim is “directed to.” When the claims are taken as a whole, only claims that are entirely directed to the exclusions are barred under §101(b).

The most significant differences also emerge in subsection (b). Most notably, the IPO, AIPLA, and IPL all use different qualifiers for when subsection (b) precludes patentability. In explaining their choice, the IPO expounds the differences between all three: “if and only if” creates a necessary and sufficient condition for the applicability of §101(b), precluding any other exceptions while affirmatively applying those provided. “Only if” creates a necessary condition, leaving the door open to further requirements for application to be created by the courts. And “may be denied” creates a sufficient but not necessary condition, allowing for the possibility that alternative conditions may be created.

There is also a difference in the conditions’ substantive presentation. The IPO and AIPLA chose to rephrase the historical judicial exemptions with the goal of returning them to their historically intended, extremely limited definitions. In contrast, the IPL chose language that emphasizes the court’s historical jurisprudence in creating the exceptions in the first place: the concern of preempting all practical applications of a law of nature, natural phenomenon, or abstract idea. Thus, all three proposals implicitly acknowledge the practical desire for the judicial exemptions but attempt to strictly limit the scope of what is disqualified therein. However, should potential drafters wish to make this point absolutely clear, they may want to elaborate on the definitions of the exceptions limited to help interpreting courts interpret the intended boundaries of §101(b)[ii].

Further, subsection (c) of the IPO/AIPLA’s proposal and the second half of subsection (b) of the IPL’s, contains a clause that expressly precludes any consideration of the requirements of §§ 102, 103, or 112, or the presence of an inventive concept. This provision expressly overturns the second step of the Alice test and prevent decision makers from confusing patent eligibility with the other requirements for patentability.

Finally, there is an additional exclusion in the IPO and AIPLA’s proposals: “the manner in which the invention was made.” This provision can be read to forbid decision makers from considering whether the invention was made by automating a process, thereby ensuring the patentability of software inventions.

Ultimately, the end game of each of these proposals is to spur the largest change to Patentable Subject Matter in U.S. history. The Intellectual Property groups behind each proposal seek an overhaul that would expressly overturn the Alice series and restore patentable subject matter to ‘anything under the sun that is made by man.’ How this should be done is a question with varying answers amongst practitioners. The answer requires attention to statutory details, such as the appropriate qualifier for subsection (b), careful explanation of the exceptions, and a consideration for how each clause may be interpreted. These details can only be teased out through a comprehensive conversation. At the very least, the proposals are a starting point. But if Congress intends to intervene to provide clarity in the patent system, they need to start the conversation soon.

TABLE 1

Footnotes:

[i] Credit to Dennis Crouch for presenting a similar table – the table makes comparisons intuitive.

[ii] For instance: the IPO argues that “exists in nature independently of and prior to any human

activity” is intended to confirm Myriad’s distinction between DNA and cDNA, but whether the same distinction would match the result in In re Roslin Institute is questionable.

Philip Simon is a J.D. candidate, 2019, at NYU School of Law.