Hold the Mayo: Restoring Patent Eligibility
Last week the Senate Subcommittee on Intellectual Property held a hearing on the S.2140, the Patent Eligibility Act of 2023, the latest proposal to reform the law regarding patent-eligible subject matter under 35 USC 101, and to undo the effects of a line of cases decided in the wake of a pair of Supreme Court precedents, Mayo v. Prometheus, 566 US 66 (2012), and Alice v. CLS Bank, 573 US 208 (2014). Those cases set up a framework under which claimed subject matter that involves abstract ideas, natural phenomena, or laws of nature, at the point of novelty, is not eligible for patent protection.
The provision addressed by Alice and Mayo, 35 USC 101, allows patenting of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” This broad terminology, according the drafters of the 1952 Patent Act, was meant to enable patenting of “anything under the sun made by man.” (Although in view of Ecclesiastes 1:9 (NIV: “there is nothing new under the sun”), it is fortunate that King Solomon never became a patent examiner.)
Despite the broad and unqualified language of 35 USC 101, courts have found that there are some things that are impliedly not patent eligible subject matter. Examples, as recognized in Alice, are laws of nature, natural phenomena, and abstract ideas (including mathematical formulas). But what about processes or machines (or compositions of matter) that make use of incorporeal things from one or more of these categories?
Prior to the mucking about in this area by the Supreme Court in Bilski v. Kappos, 561 US 593 (2010), one oft-applied test was the machine-or-transformation test: an inventive machine or process was patent-eligible subject matter, despite using an incorporeal thing (such as a mathematical formula) if 1) it was implemented in a particular machine in a non-trivial manner; or 2) it transformed a physical object from one state to another. This rule had the benefit of providing a (reasonably) clear line between what was and was not patent-eligible subject matter.
Instead of that bright line, since 2014 we have been in the era of the Alice/Mayo test, a multi-step mess that involves separating prior art elements out of what is claimed, seeing if what is left is “directed to” a judicial exception (the incorporeal categories listed earlier: laws of nature, natural phenomena, or abstract ideas), and (if so) whether the claim also recites “significantly more” inventive material than the judicial exception.
The application of this test has resulted in much uncertainty, with many patents being found invalid as being directed to abstract ideas (or other judicial exceptions), despite clearly involving tangible processes or machines. (The author has a fondness for waiving printed-out patents in front of his students, pointing out that the ink patterns on paper are nothing if not abstract, relying for their meaning on symbolic interpretation. Abstract concepts are an indispensable part of patents and patent law.) Some wags have even proposed a “drop-it-on-your-foot test,” under which something would be patent eligible if what is claimed could cause pain by being dropped on one’s foot. (Yes, things that would have passed such a test have been found by the courts to be patent ineligible as “directed to” an abstract idea, without significant tangible inventive features.)
Despite much grumbling and gnashing of teeth among patent practitioners, patent owners, and even lower-court federal judges, the Supreme Court has declined many times to revisit its 35 USC 101 jurisprudence. The culmination perhaps came in the case of American Axle v. Neapco, in which a patent related to a method for manufacturing propeller shafts so as to attenuate vibrations was found invalid by the Federal Circuit, as being patent-ineligible subject matter directed to the utilization of a natural law, without adding anything significantly inventive beyond the natural law. The patentee petitioned for certiorari to the Supreme Court in late 2020. In 2021 the Supreme Court asked for the views of the Solicitor General of the United States as to whether it should take the case. More than a year later the United States filed an amicus brief urging the Supreme Court to accept the case, in order to clarify the law regarding 35 USC 101, and to revisit the Alice/Mayo test. Still the Supreme Court declined to take up the matter.
Which brings us to the present legislation, S.2140, the Patent Eligibility Restoration Act of 2023. The bill would amend 35 USC 101 to undo the part of the Alice/Mayo test winnowing the prior art elements away from what is claimed, in the process of seeing if the claim involves the statutory “process, machine, manufacture, or composition of matter,” as opposed to only the incorporeal judicial exceptions. The judicial exceptions would remain under S.2140, such that one could not patent (say) a mathematical formular per se. But the amendment to 35 USC 101 would specify that patent eligibility would be determined “by considering the claimed invention as a whole and without discounting or disregarding any claim element.” In particular this interpretation would be made without regard to “whether a claim element is known, conventional, routine, or naturally occurring.” Under this guidance, patent-eligible subject matter would be broader than even the machine-or-transformation test.
Will S.2140 become law? While no one can predict the future with certainty (see Ecclesiastes 10:14 (NIV: “No one knows what is coming”); and a Danish proverb (not Yogi Berra) (“It is difficult to make predictions, especially about the future”)), it is noteworthy that the exact same bill now before the Senate Judiciary Committee was also introduced in the last Congress as the Patent Eligibility Act of 2022 (S.4734), and never made it out of committee. Odds are that the present proposed legislation will suffer the same fate.
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