AMENDING ALICE: ELIMINATING THE UNDUE BURDEN OF "SIGNIFICANTLY MORE".

• Author: Woodward, Michael R.

INTRODUCTION

In 2014, the Supreme Court decided Alice Corp. v. CLS Bank, (1) significantly expanding the use of the judicially created exceptions to patent eligibility in the lower courts and at the United States Patent and Trademark Office ("USPTO"). (2) The two-step test set out by the Court entails rejecting or invalidating a patent as being directed to ineligible subject matter under 35 U.S.C. [section] 101 through the use of the judicially created exceptions. (3) In applying the Alice two-step test, courts have arbitrarily utilized inquiries in its eligibility analysis which have historically been reserved for patentability analysis. (4) Additionally, the Court has failed to give any reasonable guidance as to what constitutes an "abstract idea." (5) As such, inventors and practitioners are left to wonder how to successfully overcome an Alice rejection. The Supreme Court has been cautious to discourage patent examiners and the lower courts from an expansive application of the judicially created exceptions. (6) However, judges and USPTO examiners have felt bound by the broad, sweeping language utilized by the Court, striking down a clear majority of patents facing an Alice challenge or rejection as a result. (7)

An effective patent system, providing incentive for scientific research and development, is critical in bringing innovation to an ever increasingly global marketplace. (8) Innovation today occurs across borders and the needs for greater efficiency, increased predictability, and reliability for applicants are crucial in today's global economy. (9) With the recent changes in U.S. patent law, the availability for protection for many of these scientific developments may be dwindling. Many of the leading Silicon Valley companies have begun to turn away from patents and are instead protecting their ideas using copyright and trade secret law, or simply investing money elsewhere. (10) Patent filing numbers were down in the 2015 fiscal year for the first time since 2009, the year of an economic recession. (11) With the decreased possibility of protecting their intellectual property, the innovative culture surrounding Silicon Valley and these leading companies may be stifled. As such, it is crucial that the Court clarify the bounds of the patent statutes and reign in the use of the judicially created exceptions to section 101 sooner rather than later.

This paper will proceed as follows: Part I will provide a brief overview of United States patent law. Part II will examine a series of cases at the Supreme Court analyzing section 101 leading up to and including the Alice decision. The impact of the Alice decision will then be analyzed in Part III by looking at Federal Circuit decisions applying the Alice test and the almost uniform plea from inventors, patent attorneys, and academics alike for the Court to revisit the bounds of the judicially created exceptions to section 101. In Part IV, it will be argued that, while possibly well meaning, the application of the Alice test is contrary to congressional intent as it introduces concepts of patentability into the eligibility analysis. Further, the test places district court judges in a difficult position interpreting laws and technologies which they are often unfamiliar with. (12) Finally, Part V will attempt to provide a solution to the problems presented by Alice by removing the undue burden of requiring "significantly more." (13)

1. OVERVIEW OF PATENT LAW

   A patent is a government grant which is meant to promote scientific progress. (14) This grant allows the patent owner the right to exclude others from making, using, or selling the claimed invention for a set number of years. (15) A patent offers a limited monopoly over the invention to the inventor and thus encourages innovation by allowing the exclusion of others from the marketplace in exchange for a complete disclosure of the invention. (16) The disclosure of the invention allows for others to benefit from the knowledge and to further build on the disclosed invention.

   The first United States Patent Act was passed in 1790. (17) This act was modified, largely by Thomas Jefferson, in 1793 to include the first definition of patentable subject matter: "any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter." (18) The Patent Act was modified again in 1836, but the first modern Patent Act was laid out in 1952. (19) The Patent Act of 1952 added that an invention must be non-obvious as well as being new and useful. (20) The next major shift in U.S. patent law came in 2011 with the Leahy-Smith America Invents Act ("AIA"). (21) The AIA amended the patent law from a "first to invent" system, where the first applicant to invent was entitled to the patent, to a "first inventor to file" system, where the first applicant to file the application at the USPTO is entitled to the patent. (22)

   1. Patentability Requirements in the United States

   To obtain a patent, U.S. patent law has four basic requirements: the invention must be of a patentable eligible subject matter; (23) the invention must be novel; (24) the invention must be non-obvious; (25) and the invention must be useful. (26) While this paper will focus on the subject matter eligibility requirement, it is important to understand the other requirements as they will serve as the basis in determining patent-eligible subject matter in the absence of the current Alice test. (27)

   Subject matter eligibility is governed by 35 U.S.C. [section] 101 which states that "[w]hoever 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." (28) As such, section 101 sets out four basic categories of patent-eligible categories, into which an applicant's invention must fall: (1) process; (2) machine; (3) manufacture; and (4) composition of matter. (29) Additionally, section 101 recognizes that a new use or improvement of a known invention is also patent-eligible (e.g. using a known chemical compound for a previously unknown use, the unknown use, and not the known compound, may be patented). (30)

   The Supreme Court has specifically identified three categories of non-statutory subject matter which may not be patented. (31) These judicially created exceptions are the focus of the Alice decision. (32) They are "[l]aws of nature, natural phenomena, and abstract ideas." (33) Within these judicially created exceptions to section 101 are things such as mathematical formulas, scientific principles, inventions that do not work (e.g. perpetual motion devices), naturally occurring substances, and unmodified living organisms. (34)

   Novelty has been a staple of patent law dating by the eighteenth century. (35) For any effective patent system to function, an invention must be new to obtain a patent. (36) 35 U.S.C. [section] 102 states that a patent will not be novel if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." (37) Section 102 carves out exceptions for disclosures made within one year of the filing date by the applicant or a person who obtained the information from the applicant and for certain disclosures appearing in patent applications. (38)

   Further, U.S. patent law requires that an invention be non-obvious in view of the prior art. (39) Section 103 states:

   A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. (40) Section 103 requires that, at the time of filing, the claimed invention has more than just minor and inconsequential differences between the invention and the prior art. (41) In determining whether an invention is obvious, courts will evaluate: (1) the scope and content of the prior art; (2) the differences between the invention and the prior art; (3) the level of ordinary skill in the art; and (4) any secondary considerations and objective indicia of non-obviousness. (42) Some examples of secondary considerations which might point to an invention being non-obvious include commercial success, failure of others, long felt but unsolved need in the field, the existence of licensing of the invention, copying of the invention, unexpected results, and skepticism of experts (stating the invention is unusual). (43)

   Additionally, 35 U.S.C. [section] 112 requires that a patent application describe the invention, and the manner or process of using it, in "full, clear, concise, and exact terms" so as to enable a person having ordinary skill in the art to make and use the invention. (44) Moreover, "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention." (45) Further, the application must set out the "best mode" for carrying out the invention. (46) The Federal Circuit has held that section 112 contains two requirements, a written description requirement and an enablement requirement. (47) These requirements ensure that the invention is reasonably described in a way to allow one having ordinary skill in the art to know what the invention is and how to practice it, thus eliminating vague and overbroad language from claims. (48)

   There is also a requirement that the invention be useful, however this is rarely an obstacle to patentability. (49)...