Opinions and Editorials

Dec. 19, 2018

IP Watchdog: American Innovation at Risk: The New Congress Must Clarify Which Inventions Are Eligible for Patents by Herbert Wamsley

The U.S. Supreme Court has muddied the waters about patent eligibility in a way that threatens American innovation.  Capitol Hill is beginning to discuss this as a possible legislative issue for 2019.  Some would say it is as important as the intellectual property disputes in the tariff war with China.

In a recent speech at the Intellectual Property Owners Association (IPO) annual meeting, USPTO Director Andrei Iancu, the President’s principal advisor on intellectual property matters, challenged the Supreme Court’s interpretations of patent subject matter eligibility.

Iancu is right. In a series of opinions culminating in the Alice case in 2014, the Supreme Court departed from 200 years of traditional U.S. patent law.  Ever since 1793, section 101 of the Patent Act and its predecessors made an invention patent-eligible, subject to other requirements, if it fell within the categories of process, machine, manufacture, and composition of matter.

In the Alice line of cases the Supreme Court established the two-part test for section 101 that has become notorious among patent attorneys:  (1) whether an invention is directed at an “abstract idea” or “law of nature,” and (2), if so, whether the invention includes an “inventive concept.” The Alice test has led to chaos in the patent world. The opinion comingles the test for patent eligibility under section 101 with tests under other sections of the statute such as novelty and nonobviousness.

Abstract ideas (which means mere ideas) and laws of nature per se were ineligible already.  Patent attorneys are mystified by Alice’s addition of its “inventive concept” and “well-understood, routine, conventional” requirements, and they are appalled by the thought that judges might decide those issues without evidence.

Commentators have become so confused and intimidated by the Supreme Court that they speak of the “judicial exceptions” to section 101. Judges, of course, have no authority under the U.S. Constitution to make exceptions to legislation.  Alice is a judicial interpretation of section 101, not a judicial exception, and a very opaque interpretation at that.

Obama patent head David Kappos has said it is now easier to protect software-related inventions in Europe and Asia than in the U.S.  He doesn’t like it that China may be giving better protection than the U.S.   Pre-Alice, this would have been Alice in Wonderland talk.

Director Iancu said, “Whether through legislation or otherwise, there is a growing consensus that the issue must be promptly addressed.”