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What is Patentable?

The Solicitor General of the United States asked the Supreme Court of the United States to take up a case that could clarify what types of software and processes are patent eligible after the widespread confusion and uncertainty of the landmark Alice Corp v. CLS Bank International decision from 2014. 

The case being considered for cert. is American Axle & Manufacturing Inc v. Neapco Holdings LLC, U.S. Supreme Court, No. 20-891. 

Under the two-part test for Section 101 patent eligibility that was cited in the Supreme Court’s Alice decision, the Court of Appeals for the Federal Circuit, which has sole jurisdiction over appeals for all patent cases, found a claim to a method of manufacturing a driveshaft as ineligible subject matter. According to the appellate court, the first part of the two-part test was satisfied, because the claim was drawn to an application of Hooke’s law, a law of nature. More controversially, perhaps, the appellate court also ruled that the specific application of Hooke’s law to the design of the driveshaft, as recited in the claim, did not add the ‘something more’ needed in part two of the Alice test.

According to the Solicitor General of the United States, the three judge appellate panel in American Axle got it wrong, because the invention recited in the claim that was held ineligible is a type of industrial manufacturing method that should be patent eligible. 

Before Alice, many patent attorneys would never have considered a claim to a method of designing a physical thing, like a driveshaft. to be ineligible subject matter. So, the panel’s decision in American Axle caused quite a stir. The entire panel of appellate judges split evenly at 6-6 in denying an en banc rehearing of the decision by the three judge panel, with five separate opinions written in the tie vote, which left the three judge panel opinion in place. One judge warned that allowing the decision to stand would present a ‘litigation gamble’ for inventors, removing the ‘once-reliable incentive to innovation’ that patent law is supposed to foster. Alice, and all of the decisions before and after it, are based on legal precedent, sometimes referred to as court-made law. Legal precedent builds on itself and sometimes morphs over time. In Alice and American Axle, the courts were interpreting Section 101 of the Patent Act, which states that a person is entitled to patent any “…new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof….” Originally, this language was viewed expansively, covering ‘everything under the sun made by man.’ However, the Supreme Court of the United States has long held that this statutory language excludes patent eligibility of patent claims that are drawn to nothing more than abstract ideas, algorithms, and laws of nature. In the last decade, the number of claims challenged as merely abstract ideas, algorithms and laws of nature has skyrocketed. The narrow exception, as traditionally applied for 150 years, now threatens to block an increasingly large swath of inventions from receiving a patent. Alice is not limited to methods. The same logic applies to device claims if the device consists of nothing more than conventional elements drawn to an ineligible abstract idea. It’s past time for the Supreme Court to take up Section 101 again. If the Supreme Court fails to narrow its Alice decision, Congress needs to pass legislation clarifying what is patentable and what is not patentable.


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