Back in the postwar era, when Ralph Kramden drove for the Gotham Bus Company in The Honeymooners, inventions enabled progress in the mechanical and chemical arts. Today, computers have largely replaced the chalkboards and drafting tables of yesterday as the principal tools of technological advances.
Over time, many patents issued from the Patent Office covered inventions whose claims required using a computer. On June 19, 2014, however, in Alice Corp. Pty. Ltd v. CLS Bank Int’l, the Supreme Court ruled that using a computer does not, standing alone, create an invention eligible for patent protection.
In this ruling, the Court stressed that innovators must pay careful attention to the patentability of the underlying invention rather than the means one employs to achieve it. A higher bar now exists for patent-eligibility of computer-implemented inventions covering business methods centered on basic economic concepts. As this new interpretation is further developed in the courts, this barrier could extend to reach other technological areas.
Section 101 of the patent laws defines those inventions that qualify for patent protection. The Supreme Court has long held that patent rights may not exclude the public from accessing certain “fundamental principles” — those patent-ineligible laws of nature, abstract ideas, and naturally-occurring materials and phenomena that are “part of the storehouse of knowledge of all men.”
For decades, the “transformation and reduction of an article to a different state or thing” has been a clue to patentability of a process that did not involve a machine. Courts had been divided about whether using a generic computer — a machine — could transform a fundamental principle into a patent-eligible application.
In Alice, the Supreme Court confirmed that a patent protecting a method of using a computer to manage the risk that only one party to a financial transaction will pay what it owes by using a third party clearinghouse is not valid
The argument before the Court was whether the practice of intermediated settlement — “a fundamental economic practice long prevalent in our system of commerce” — could be transformed into a patent-eligible method. The Court affirmed that the patent claims are invalid, holding that merely requiring the use of a generic computer was insufficient to transform the patent claim from a patent-ineligible abstract idea to a patent-eligible application of that abstract idea.
Innovators in all technological areas should pay attention to two broadly-applicable takeaways from Alice.
The rule in Mayo rules
In Alice, the Court confirmed, once again, that patent eligibility under Section 101 depends upon a two-step inquiry. Step one asks whether the claim is directed to a patent-ineligible fundamental principle. If the answer is yes, then step two examines what other features the claim has that “transform the nature of the claim into a patent-eligible application.” As the Court explained in Alice, step two is a
search for an inventive concept—i.e., an element or combination of elements that is sufficient to ensure that patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Technology innovators and their counsel must remain vigilant to highlight those additional features that add “significantly more” to a patent claim to avoid rejection or invalidity under Section 101. After Alice, it is clear that a general purpose computer falls far short of this standard for an “inventive concept.” But other requirements exist: The additional features must not be “conventional steps,” “well known in the art” applied at a “high level of generality.”
Determining what additional features are “well known” and “conventional” will depend on the particular field of the invention. But across the board, these requirements could complicate patenting inventions that use new combinations of existing technologies or represent incremental improvements over known products or methods.
The problem is pre-emption
Alice identifies pre-emption as the key concern about patents relating to fundamental principles: the danger that a patent may grant a monopoly over “the basic tools of scientific and technological work.”
Broad claims relating to fundamental principles raise the specter of pre-emption. Adding elements to those claims may narrow them sufficiently to add “significantly more” to the fundamental principle and become patent-eligible. On the other hand, adding elements to claims may limit their value if infringement is more difficult to establish and prove.
As an example, the Court points to the invention in Diamond v. Diehr, in which the Arrhenius equation — an otherwise unpatentable mathematical formula — could be applied in an improved method for curing rubber that satisfies Section 101 requirements.
Alice may have opened a new front on the battleground for patent eligibility: Courts must now define the contours of those “abstract ideas” that cannot be patented without “significantly more.” Where might such abstractness lie today, where enormous value can be found in collecting, aggregating and synthesizing information? And how long will it be before courts find “advanced” technologies like functional MRI machines and mass spectrometers equivalent to a general purpose computer? Time will tell whether patents can sustain future innovation in an era defined by computer-aided discovery.