By Bruce Sunstein. A member of our Patent Practice Group
In the wake of its decisions denying eligibility for patent protection to diagnostic procedures (Mayo Collaborative Services v. Prometheus Laboratories, 2012), and isolated genomic DNA (Association for Molecular Pathology v. Myriad Genetics, 2013), the Supreme Court has denied patent eligibility to a computer-implemented invention on the grounds that it is directed merely to an “abstract idea,” in Alice Corporation Pty. Ltd. v. CLS Bank International, decided June 19, 2014.
In what might be a silver lining (or maybe an aluminum foil lining) to this cloud, the Court did not hold all computer-related inventions to be ineligible for patent protection, but only those that are deemed directed to an abstract idea.
Motivating the Court’s decision is a concern that patents impede innovation when they are directed to subject matter that the Court regards as an abstract idea. Abstract ideas are one of three exceptions the Court wrote into section 101 of the patent law, which defines what subject matter is eligible to be considered for patenting.[1] (Only if subject matter claimed in a patent application is eligible for patenting will the patent application be examined for the additional requirements under patent law that the subject matter must be new[2], non-obvious[3], and clearly described[4] and claimed[5] in the application.)
The Court explains its rationale for these exceptions by quoting from its Myriad decision: “Laws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technological work.”[6] To elaborate on why inventions otherwise eligible to be patented should not be eligible if one of these Court-made exceptions is present, the Court cites its Prometheus decision: “Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws.”[7] Further relying on Prometheus, the Court admonishes, “We have repeatedly emphasized this concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.”[8]
So how does the Court determine whether patent claims are directed to an abstract idea—or, for that matter, to a law of nature or natural phenomenon? It specifies a two-step process drawn from Prometheus: “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.”[9] Second, if they are, then there is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”[10] (More)
In what might be a silver lining (or maybe an aluminum foil lining) to this cloud, the Court did not hold all computer-related inventions to be ineligible for patent protection, but only those that are deemed directed to an abstract idea.
Motivating the Court’s decision is a concern that patents impede innovation when they are directed to subject matter that the Court regards as an abstract idea. Abstract ideas are one of three exceptions the Court wrote into section 101 of the patent law, which defines what subject matter is eligible to be considered for patenting.[1] (Only if subject matter claimed in a patent application is eligible for patenting will the patent application be examined for the additional requirements under patent law that the subject matter must be new[2], non-obvious[3], and clearly described[4] and claimed[5] in the application.)
The Court explains its rationale for these exceptions by quoting from its Myriad decision: “Laws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technological work.”[6] To elaborate on why inventions otherwise eligible to be patented should not be eligible if one of these Court-made exceptions is present, the Court cites its Prometheus decision: “Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws.”[7] Further relying on Prometheus, the Court admonishes, “We have repeatedly emphasized this concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity.”[8]
So how does the Court determine whether patent claims are directed to an abstract idea—or, for that matter, to a law of nature or natural phenomenon? It specifies a two-step process drawn from Prometheus: “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.”[9] Second, if they are, then there is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”[10] (More)
[1] Specifically, the wording of 35 U.S.C. § 101 is as follows; “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
[2] 35 U.S.C. § 102.
[3] 35 U.S.C. § 103.
[4] 35 U.S.C. § 112.
[5] 35 U.S.C. § 112.
[6] Slip opinion, p. 6. For ease of reading, quotations from the opinion may omit interior quotation marks, capitalizations, brackets and ellipses found in the original.
[7] Id.
[8] Id.
[9] Slip opinion, p. 7.
[10] Id.
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