35 USC § 101, the statute regarding what constitutes patentability subject matter, has not been updated since 1952. Thank goodness not much technology-wise has changed since 1952. Thanks to Congress for staying on top of things. Let’s also thank the Supreme Court for giving us Alice in 2014. (Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014))
Prior to 2014, the Supreme Court pretty much held that anything invented by man is patentable except for three judicial exceptions: Abstract ideas, laws of nature, and natural phenomenon. The Court held that these three exceptions are basic tools of scientific and technological work, and as such, giving patents to such fundamental concepts would impede, rather than promote, innovation. I think this was sound reasoning, and it was easy to work with.
Then, in 2014, Alice came along, and mucked everything up. Essentially, Alice created a new two-step test regarding patentable subject matter. The first step is determining whether a claim is regarding one of the statutory categories of the 101. If yes, step 2, which has two prongs, is applied. The first prong is whether the claim, as a whole, is directed towards an exception. If yes, the second prong is whether the claim, as a whole, does more than an exception. This two step, double pronged test is performed by Examiners at the USPTO on every patent application.
Since the introduction of Alice in 2014, the average number of office actions to allowance or abandonment has increased by about 1 (at least from what I can tell, the USPTO does not have clear data on this). This adds unnecessary cost and delays to the patent process.
From my experience, about 80% of the patent applications I prosecute, receive 101 rejections. And, in general, the USPTO does a bad job applying 101.
Case in point, I worked on an office action response today. It was the third office action for this patent application and it still includes a 101 rejection. My first independent claim is long to properly claim the invention. It includes 403 words. In the Examiner’s Step 2A – Prong 1 test, which is whether the claim, as a whole, is directed towards an exception, the Examiner distilled my 403 word claim into a 29 word generalization that drastically over-simplified the claimed invention.
From the Examiner’s 29 words (not the 403 words of the claim), the Examiner concluded that claim 1 was an abstracted idea. Keep in mind that a true abstract idea is a basic tool of scientific and technological work. My claim 1 was far from that. For Step 2A – prong 2, the Examiner further generalized claim 1 to be the mere use of a computer performing general computer functions.
If the Examiner continues with this overly generalized interpretation of the claims, then I’ll have no choice but to appeal, which will add further costs and delays to obtaining the patent.
I’d like to say this is an isolated incident, but it’s not. It’s common practice. What varies is how the examiners respond to when their 101 analysis errors are pointed out. Until something changes, the patent process will be overburdened with ill-reasoned 101 rejections.
So, as participants in the patent ecosystem, let's apply more pressure on Congress to change 35 USC 101 to allow software and business methods to be of patentable subject and to abolish Alice. Let’s kill Alice.
*Please note that this article is not legal advice; it is not a legal opinion; nor should you rely on it as legal advice or as a legal opinion. This article merely expresses the author’s general thoughts on a topic regarding the business of patents. Nothing in this article establishes any form of an attorney client relationship between you, the reader, and the author of this article.
