Overview of 35 U.S.C. § 101
During the 2000s, there was a growing concern about the quality of patents being issued for computer and software-based inventions. Namely, droves of patents were being issued on inventions (“subject matter”) that many believed were not intended to be patented under Section 101 of the Patent Act (US Code Title 35). Section 101 states, “[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.” The concern centered around whether numerous patents were being issued on inventions that did not fall within the recited categories of a process, a machine, a manufacture, or a composition of matter.
Computer, and especially software-based, inventions have introduced uncertainty with respect to these categories, which were originally prescribed in 1952, well before computers became so ubiquitous.
To address the public’s concerns about the issuance of patents directed to computer and software-based inventions, the Supreme Court ruled on patent-eligible subject matter in Alice v. CLS Bank (2014). In its decision, the Court provided a two-step process for determining patent-eligibility, which greatly impacted examination of computer and software-based inventions at the United State Patent Office (USPTO) and interpretation of patent claims during litigation. Specifically, many computer and software-based inventions have been interpreted as being an “abstract idea,” and thus not patent-eligible as a result of the decision.
Confusion from current case law and USPTO guidance
Since Alice, there has been uncertainty and confusion surrounding the application of the Court’s two-step process for determining patent-eligibility. The USPTO has promulgated its own guidelines indicating how it believes examiners should apply the two-step process to claims of pending patent applications, and the Federal Circuit has delivered numerous decisions indicating whether particular patent claims are directed to patent-eligible subject matter. At times, it has appeared the guidelines and case law have been at odds with each other. Further, a definition of what constitutes an “abstract idea” has not been provided.
As a result, applicants, especially technology companies or those providing a service through software or otherwise utilizing the internet, are often left wondering – “is my product or service eligible for a patent?” or “is it even worth trying to patent the technology because of the decision in Alice and the ensuing confusion?”
Without specific guidance as to what constitutes an abstract idea, there is an air of subjectiveness from patent examiners that is imparted into the patent-eligibility determination with each patent application. Thus, applicants and patent practitioners often perceive that such determinations are not applied evenly across all inventions.
The Supreme Court’s interest in weighing in again
It does appear that the confusion surrounding what constitutes patent-eligible subject matter is apparent to the Supreme Court and some additional guidance from the Court may be provided in the near future. One sign of the Court’s interest in clarifying the patent-eligibility confusion appeared in 2020 following a petition for writ of certiorari from American Axle & Manufacturing, Inc. to review the Federal Circuit’s application of 35 U.S.C. § 101. In American Axle v. Neapco Holdings LLC, the court found a patent owned by American Axle to be invalid as being directed to unpatentable subject matter. Several intellectual property-focused legal associations and former Federal Circuit Chief Judge Paul Michel jointly with Senator Thom Tillis (NC) submitted amicus briefs in support of the writ. Further, the Solicitor General recommended hearing the case. Ultimately, the Court passed on the opportunity to hear the case.
The latest sign came October 3, 2022, with the Court again asking the Solicitor General for a recommendation on hearing a case presented by Interactive Wearables LLC, where a set of patents directed to a media player were found to be patent-ineligible by the Federal Circuit in Interactive Wearables, LLC v. Polar Electro Oy (2021). Although it is unknown whether the Court will weigh in on patent eligibility through the case presented by Interactive Wearables, it is clear that the Court is looking to address the issue in the near future.
Five suggestions for handling the uncertainty of Section 101
Even in view of the above, the current patent-eligibility landscape should not dissuade one from filing a patent application as the advantages of obtaining patent protection outweigh the consequences of realizing one’s invention has been copied without having any recourse. The following are a few suggestions to keep in mind when working with a patent attorney to draft a patent application and throughout prosecution:
- Ensure that the application broadly discusses the inventive concepts and provides concrete practical applications, e.g., the utilization of an end result of the implementation of a software algorithm. The advantages of the practical applications for users should be emphasized.
- When the invention is directed to software or other computer technology, the patent application should discuss any improvements to the functioning of a computing device, when applicable. This may include improvements in the efficiency of transmission, storage, or processing of data.
- All applications should discuss the current state of competitor products or services and their shortcomings as well as technical hurdles your invention overcame to solve those shortcomings.
- When a patent is about to issue, consider filing a continuation application to maintain a pending application that describes your invention. Claims may then be drafted in the future in the event that clarity is provided as to what constitutes patent-eligible subject matter. This enables continuation applications to include claims that adhere to the latest case law or other guidelines.
- Finally, seek the help of a patent attorney with expertise in the field of your technology to draft the patent application. Working with an attorney that is well-versed in your technology will go a long way to ensure the necessary level of technical detail is included thereby positioning your patent application with the highest likelihood for success.