The year was 2013.  You may remember it for the roll-out of the Affordable Care Act (a.k.a. Obama-Care) or perhaps the Boston Marathon Bombings.  For me, the latter event hit especially close to home.  I was attending law school in Boston, and earlier in the day I rode my bike to watch the Boston Marathon.  Little did I know that home-made bombs would soon shatter the lives of runners and spectators alike.  Later, I remember sitting on the couch in my apartment and hearing the omnipresent whine of sirens – the sound seemed to be coming from everywhere at once, and for good reason.  One of the perpetrators lived a few blocks from my apartment in Cambridge, Massachusetts.

Being a patent attorney, I also remember 2013 for other events, although most people probably didn’t notice.  In particular, I remember 2013 for the immediate aftermath of the Supreme Court’s decision in Mayo v. Prometheus.[1]  Although the damage associated with this decision was not immediately visible, it laid the groundwork for inestimable harm to investment-backed expectations around the world.  It is unsurprising that many patent stakeholders have responded to Mayo with open derision.  For example, patent-law blogger Gene Quinn recently described Mayo as a “lawless decision by an omnipotent Court wreaking havoc on patents.”[2]

Although Mayo did not arrest the general public’s attention like the Boston Marathon Bombings, it was a topic that had already been at the front of my mind.  At the time, I had just spent much of a year drafting an article on the patentability of claims that involve abstract ideas, and, like Mr. Quinn, I had come to the conclusion that apart from the statutory requirements explicitly listed in the patent statutes, the laws of the United States, as properly interpreted, did not place limitations on the type of subject matter that was patentable.

The basic requirements for patentability are established in Sections 101, 102, 103 and 112 of Title 35 of the United States Code.  Starting with Section 101, the statute states, “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.”  Any fair reading of this statute would indicate that it covers essentially any type of invention that a person can imagine.

Section 102 reiterates Section 101 by requiring that the invention be “new” and further establishing what “new” means.  This is fairly uncontroversial.

Section 103 requires that the invention be non-obvious, another reasonable requirement.

Meanwhile, Section 112 requires that the invention be described clearly and that a skilled person is able to make and use the invention without undue experimentation.

As can be seen, Sections 102 and 103 already prohibit conventional, well-known processes, previously existing natural phenomena, and naturally occurring products because they lack novelty or they are obvious.[3]  Furthermore, Section 112 already places limitations on claiming an abstract idea in the sense that it prohibits inventions that are not clearly defined or lack sufficient description to enable their reproduction without undue experimentation.[4]

Nonetheless, perhaps as an over-reaction to so-called patent trolls, the Supreme Court was already headed in a different direction.  In charting its path on patent-eligibility, the Court has relied on a questionable interpretation of the Constitution, which is ironic given that the language in question expressly empowers Congress to promote progress in the useful arts by granting patents.  In particular, the Constitution states that Congress shall have power “To promote the progress of science and useful arts, by securing for limited times to . . . inventors the exclusive right to their respective . . . discoveries.”  Although the Supreme Court purportedly acknowledged that “it is for Congress to implement the stated purpose of the Framers” in the Constitution, with so many words, the Court decided that Congress’ judgment, as established in 35 U.S.C. §§ 101, 102, 103 and 112, was inferior to the Court’s own judgment and should be modified accordingly.[5]  By the time Mayo was decided, the Supreme Court seemed to have convinced itself that Congress’ broad statutory language in Section 101 created a standard for patent eligibility that was too permissive, and Section 101 should be creatively re-interpreted to exclude certain items from patentability,  items such as abstract ideas, laws of nature, naturally occurring products, and mathematical formula.[6]

By arriving at such a conclusion, the Court seems to have given relatively short shrift to the cooperation of Sections 102, 103 and 112 to ensure patents contribute to progress, but at first glance, the Supreme Court’s new rule also seemed relatively harmless in light of its redundancy with Sections 102, 103 and 112.[7]  Nonetheless, the rule established in Mayo proved to be quite insidious as the rubber met the road and lower courts began to apply the Supreme Court’s patent-eligibility rules.  In particular, lower courts have used Section 101 as an excuse to avoid a more substantive, evidence-based and ultimately more time-consuming analysis of patent claims under Sections 102, 103 and 112.[8]

Following the Supreme Court’s guidance, lower courts have invalidated a patent claim by merely finding that the claim was (1) directed to an exception from patentability, and (2) that the rest of the claim did not amount to significantly more than the exception because it was old or conventional.[9]  Because essentially anything can be recast as an abstract idea or product of nature, it is fairly easy for a court to abuse this rule.  For example, the court can easily find an abstract idea, and then the court can superficially conclude that the rest of the features are merely old or conventional, and therefore the claim as a whole is directed to patent-ineligible subject matter.[10]  All too conveniently, courts can dispose of patent claims without looking to Sections 102 and 103 and their more rigorous evidentiary requirements regarding novelty and nonobviousness.[11]  As an upshot, the Supreme Court’s decision in Mayo has enabled an end-run around the statutory protections for patentees with respect to invalidating a granted patent.

Although this judicially enabled short-circuiting of the patent laws has already harmed patent stakeholders, it appears that the collective alarm from affected inventors and businesses is starting to be heard.  From a judicial standpoint, after a flurry of opinions invalidating patents, the Federal Circuit has also found that some claims are patentable and has described how claims can be written to avoid patent ineligibility, such as providing (i) an improved solution to a technical problem and (ii) reciting how the improvement is accomplished in the claims.[12]  The Federal Circuit has also begun to hold district courts to higher evidentiary standards for finding that a claim is patent ineligible.[13]

From an administrative standpoint, the Director of the United States Patent and Trademark Office recently issued revised guidance to help patent Examiners determine patent-eligibility and provide more predictability for patent stake-holders.[14]

Although the tide of patent eligibility seems to have been headed away from patentees, on the horizon, there are signs that the tide has started to turn.  Moreover, because patent eligibility remains a significant danger to patent applicants in fields such as software and computer science, it can be useful to take advantage of the patent eligibility safe harbors that exist.  As one example, it can be helpful to draft patent claims that conspicuously recite how a technical improvement is accomplished, as opposed to merely reciting the improvement itself.

[1] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).

[2] Quinn, Gene. “Mayo v. Prometheus: A Lawless Decision by an Omnipotent Court Wreaking Havoc on Patents.” IPWatchdog.com | Patents & Patent Law, 7 Mar. 2017, www.ipwatchdog.com/2017/01/23/mayo-v-prometheus-lawless-decision-wreaking-havoc-patents/id=77438/.

[3] Cf. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 91, (2012) (“These considerations lead us to decline the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101.”).

[4] Cf. Id.

[5] See, e.g., Bilski v. Kappos, 561 U.S. 593, 648-57, (2010) (internal quotations omitted).

[6] See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89, (2012).

[7] See Id. at 89-90, (2012).

[8] See, e.g., Two – Way Media Ltd v. Comcast Cable Communs., LLC, 874 F.3d 1329, 1339-40 (Fed. Cir. 2017).

[9] See Id. at 1338 (Fed. Cir. 2017).

[10] See Id. at 1339 (Fed. Cir. 2017).

[11] See Id. at 1339-40 (Fed. Cir. 2017).

[12] See, e.g., Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299 (Fed. Cir. 2018).

[13] See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).

[14] 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (2019); see also Office of the Chief Communications Officer, Remarks by Director Iancu at the Intellectual Property Owners Association 46th Annual Meeting United States Patent and Trademark Office – An Agency of the Department of Commerce (2018), https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-intellectual-property-owners-46th-annual-meeting (last visited Jan. 2, 2019).