25 May
2019

The key to unlocking Alice - inventor at centre of case on tackling its legacy

Five years since the US Supreme Court issued its ruling in Alice, the judgment continues to cast a long shadow over patent-eligible subject matter. Ian K Shepherd - founder and managing director of Alice Corporation - writes exclusively for IAM on where to go from here

As I read the Supreme Court’s Alice ruling on 19th June 2014 I recall thinking something like: “Beyond our case, this is not going to end well.” Now, in 2019, our challenge is to cease articulating the problems the decision created and instead to focus on devising and promulgating solutions to them. I propose here an escape route from Alice based on first principles.

I suggest that there be three tests of patent eligibility:                      

  • A test, already broadly accepted, that a claim needs to be “a useful discovery in the useful arts”, partially statutory, novel, inventive and sufficiently enabled.
  • A currently unspoken test that a claim cannot be unreasonably pre-emptive and/or a potential source of serious harm to the United States’ interests.
  • In respect of patent ineligibility summary judgment (PISJ) hearings, a sole test that the USPTO did not err in determining that a claim was/is inventive.

Test one

Arguably, only three aspects of this test require further comment:

  • First, as is well understood by practitioners, the notion of “a useful discovery in the useful arts” is set out in Section 8(8) of the Constitution. Arguably, this phrase was used here to, in part, distinguish patentable inventions from “writings in science”.
  • Second, “partially statutory” means the current Section 101 test but without the words “useful”, “new” and “any useful improvement thereof”.
  • Third, specifically in respect of computer-implemented invention claims – the type of claims at issue in Alice – the inventiveness test element needs to include the question of whether the involved computer is intrinsic to the claim. This component is required to help ensure that the examiner of the claim at the USPTO is not unreasonably lenient in judging that the involved computer bestows inventiveness on a process or system that was, or could have been, previously performed with a pen and paper or in a person’s mind. The specifics of making this proposal intrinsic to the claim test is set out in the comments that Alice Corporation recently provided to the USPTO on its 2019 Revised Subject Matter Eligibility Guidance.

Test two

Until such time that it is explicitly recognised that a claim cannot be unreasonably pre-emptive in order to be patent eligible (see Gottschalk v Benson) and/or a potential source of serious harm to the United States’ interests, some patent ineligibility decisions by senior courts can be expected to have serious unintended consequences for the broader patent system. These conditions require new and creative thought in respect of issues such as:

  • which institution is best qualified to perform this assessment (an entity other than either the USPTO or a court?) and under what circumstances; and
  • whether the inventors/owners of patent claims judged to be patent ineligible on this test basis should be reasonably compensated for their economic loss.

Test 3

In PISJ hearings, as distinct from USPTO evaluations and court trials, not all then-relevant case facts are available for consideration. This is because such hearings primarily, if not exclusively, involve questions of law rather than fact. With USPTO examinations and court trials, all of the above-mentioned broadly accepted test conditions can be comprehensively assessed. Under the proposed regime, in respect of computer-implemented invention claims, PISJ hearings would be limited to resolving whether the involved computer is intrinsic to the claim in question. 

While being beneficial in its own right, the proposed regime would achieve an even more substantial result – cessation of any future need for the Alice judicial exception tests for computer-implemented invention claims.

Ian K Shepherd is the founder and managing director of Alice Corporation, the inventor of the claims at issue in *Alice* and both defendant and litigant in Alice Corporation’s subsequent patent dispute with CLS Bank International

For an in-depth analysis of how the law on patent-eligible subject matter has been transformed in the last five years, see IAM 96. This will be available online to subscribers at the end of next week.

Ian K Shepherd

Founder and managing director | Alice Corporation