8 Jun
2019

Alice inventor - why more needs to be done on the Tillis and Coons 101 proposal

In this opinion piece, Ian K Shepherd, the founder and managing director of Alice Corporation - which owned the patent-in-suit in the seminal US Supreme Court Alice case - argues that there are some serious problems with current 101 reform legislation proposed by Senators Tillis and Coons

On 22nd May, Senators Tillis and Coons and Representatives Collins, Johnson and Stivers publicly released their Bill Text to Reform Section 101 of the Patent Act (the Bill).

I am writing this article in response to a request from Richard Lloyd, the North America editor of IAM and editor of IAM magazine, that I communicate my thoughts on this proposed legislation.

The Bill, if implemented, would effectively eviscerate all current tests of patent eligibility. Society’s interests would not be well served by this happening. This would be so in three respects:

  • In respect of computer implemented invention (CII) claims, through making patent eligibility summary judgment hearings inapplicable.
  • In respect of non-CII claims that involve a fundamental truth other than by virtue of their possibly-involved computer(s), through allowing the patenting of claims to discoveries of fundamental truths that are merely practical applications of a fundamental truth, rather than meaningful/inventive applications of the fundamental truth.
  • Through the removal of any constraint on unreasonable claim pre-emption.

This article addresses these points and concludes with a comment on the increasingly loud public statements by lawmakers about the United States’ imperative to maintain its pre-eminence in innovation through reforming the patent system by substantially liberalising its test of patent eligibility.

However, at the outset, I need to explain why I believe the Bill would, if implemented, have the effect I suggest. I believe I also need to define four particular terms I use in this article: fundamental truth, CII claim, intrinsic and the notion of society’s interests.

Impact of the Bill

The reason I believe that, if implemented, the Bill would effectively eviscerate all current tests of patent eligibility is this: today, virtually no patent claim in any of the five proposed exclusion categories would be worded in a form that would not pass a ‘practical application’ test (whatever it eventually is). Consequently, virtually no claims would fall into the proposed ‘otherwise ineligible claim’ category. This means that the “Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim” test would rarely, if ever, be applied. Then, without a “new and useful” test, virtually all claims would be patent eligible.

Foundational terms

Fundamental Truth: I proffer that a fundamental truth is a specified relationship (discovered or otherwise by the inventor) that exists in principle apart from any human action - it can be either a scientific truth or a fundamental truth that is not a scientific truth. A scientific truth can be either: (a) an expression of a ‘discovered’ law of nature (LON) or natural phenomena (NP), other than as a mathematical formula/algorithm; or (b) an expression of a ‘discovered’ LON or NP as a mathematical formula/algorithm (for example, E=mc2). By deduction, a fundamental truth that is not a scientific truth can be considered to be any form of mathematical formula/algorithm other than a mathematical expression of a LON or NP. This form of fundamental truth does not have to be discovered because it has to be considered to have always existed, even if this existence is unknown by, at the extreme, everyone.

CII claim: I proffer that such a claim not be considered to mean any claim that recites a computer. Rather, the term solely refers to a claim that involves a computer and can be further characterised as one of the following:

  1. a claim that explicitly or implicitly involves one or more programmed computers and is a process type of claim; or
  2. a claim that explicitly or implicitly involves one or more programmed computers and is not a process type of claim and is not to the computer(s) per se, rather is to a system that operates on this/these computers, but involves one or more non-computer machines, but these machines are not more central to the claim than the computer(s); or
  3. a claim that explicitly or implicitly involves one or more programmed computers and is not a process type of claim, nor a claim to the computer(s) per se, rather is to a system that operates on this/these computers, and the claim does not involve any other non-computer machines; or
  4. a claim to a computer readable media (CRM) type of article of manufacture (AMO) and, thus one that implicitly or explicitly involves one or more programmed computers to have utility.

Intrinsic: In relation to the task of assessing whether the computer in a CII claim can reasonably be considered intrinsic to the claim, I proffer that this is only so when it is possible to answer ‘yes’ to each of the following four questions:

  • Substituting 'in a person's mind' for 'computer', if the claim could be performed this way, would the re-written claim achieve a different object to that achieved by the claim involving the computer?
  • Is the utility provided to the claim by the computer both quantitatively and qualitatively different from that which could be provided by a person or persons with pens and paper?
  • If the claim is written as a method or CRM claim, could the claim be written as a ‘machine’ claim and still achieve the object achieved by the method/CRM claim?
  • Is the claim consistently replicable?

A CII claim where the involved computer is intrinsic to the claim can reasonably be considered to contain substantially and sufficiently more than the multiple fundamental truths that are embodied in the physical manifestation of computers. Put another way, such a claim reasonably constitutes a meaningful/inventive application of the claim’s computer.

Claims that involve a computer but are not of a CII type do not require a “is the involved computer intrinsic to the claim?” inventiveness test element because the inventiveness of such claims is not derived from the involved computer. Consequently, there is no risk that the examiner of such a claim at the USPTO could be 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. And, obviously, it makes no sense to apply an ‘is the involved computer intrinsic to the claim?’ test to a claim that does not involve a computer.

The notion of society’s interests: In the debate about the relative merits of alternative notions of patent eligibility, we must not lose sight of the notion of society’s interests, as distinct from sectional interests. By the term “society’s interests” I mean a common concern among citizens, beyond mere curiosity, in the management and affairs of everyone collectively, but especially of their government(s).

It has to be obvious to anyone who carefully thinks about the question of what things should be considered by government to be patentable that at least three citizen groups could be expected to strongly support the patent eligibility liberalisation implied by the Bill:

  • Virtually all patent lawyers who perceive that their future livelihood is dependent on them being able to secure more professional work than they are able to obtain today.
  • Most independent inventors of computer-based inventions who have learned that early-stage angel and/or venture capital funding of their inventions is more likely if they have an issued US patent to their name (regardless of whether the patent is of any commercial value to them in the future).
  • Businesses and institutions involved in biologics research and diagnostics that could be expected to commercially gain from the test of patent eligibility in respect of their inventions being limited to “specific and practical utility in any field of technology through human intervention”.

But what of society’s interests? This article addresses the interests of this far broader group of citizens, generally comprising of people with little or no available time or specialist skills to be able to even begin to have a view on the subject.

Senator Thom Tillis, co-author of 101 proposal

Patent eligibility summary judgment hearings in respect of CII claims

I have already contended that, if implemented, the Bill would effectively eviscerate all current tests of patent eligibility. In turn, this would make patent eligibility summary judgment hearings inapplicable - no bases would exist for seeking them. But surely society’s interests would not be well served by such an outcome?

Arguably, this is so because, without regard for the type of claims that might be issued under the proposed regime, a proportion of CII claims issued in recent years are not truly inventive (because their involved computer is not intrinsic to the claim). Consequently, without patent eligibility summary judgment hearings being an early and low-cost way of identifying such claims, defendants of infringement contentions would be forced to incur the costs of a full court trial to, hopefully, ultimately prove this deficiency. Such a regime would place an unnecessary and unreasonable cost burden on alleged infringers and on the court system.

Non-CII claims that involve a fundamental truth other than by virtue of their possibly-involved computer(s)

In respect of non-CII claims that involve a fundamental truth other than by virtue of the possibly-involved computer(s), I believe that, if implemented, the Bill would allow the patenting of many claims to discoveries of fundamental – in this case, scientific - truths that are no more than practical applications of this truth, as distinct from meaningful/inventive applications.

Referencing the proposed replacement wording of Section 100, claims to discoveries of such truths, practically applied (for example, claims comparable to Prometheus’ claims in Mayo), would pass the proposed “provides specific and practical utility in any field of technology through human intervention” test. Society’s interests would not be well served by this happening.

Should it arise, such a world would give new meaning to the term ‘unreasonable pre-emption’ (see below). Note here that the involved computer in a claim that is of a non-CII type, yet involves a computer, cannot itself be considered to constitute a meaningful limitation to the claim. As such, claims of this type that involve another form of fundamental truth need to be assessed as to whether, besides the computer, the claim involves a meaningful limitation to this truth. Further note that a non-CII claim that does not involve a fundamental truth does not require any additional inventiveness test.

Unreasonable claim pre-emption

I believe that, if implemented, society’s interests would also not be well served through the Bill’s removal of any constraint on the notion of unreasonable claim pre-emption. Arguably, this subject has been the United States Supreme Court’s (SCOTUS’) principal concern in respect of its judicial exceptions to patent eligibility over the past 150 years, possibly reflected most clearly in its decision in Benson.

If this long-standing institutional concern is swept aside, as is implied by the Bill, what of a hypothetical future patent application from a non-US inventor (residing, say, in a country the US considers to be a strategic competitor state) for a United States patent in respect of an invention of, say, a modern form of perpetual motion machine? Further assume that the claim passes the Bill test of patent eligibility (101), as well as 102, 103 and 112. What then? I suggest that the notion of unreasonable claim pre-emption simply has to be reflected in any change in the statutes in respect of patent eligibility. Practically, this would be a test of both unreasonable pre-emption and of whether the claim, if allowed/maintained, is likely to seriously harm the US’ interests.

This subject has potential constitutional implications too. Section 8, clause 8 of the Constitution reads: “The Congress shall have the power to promote progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Excluding the words in this sentence that relate to ‘writings in science’, the remaining sentence would read, “The Congress shall have the power to promote progress of [the] useful arts by securing for limited times to inventors the exclusive right to their discoveries”.

Arguably, three claim-related questions arise in respect of these remaining words:

  • Is the claim outside of the domain of the ‘useful arts’ by virtue of it not being to a process, machine, manufacture or composition of matter?
  • Is the claim of a type that, whilst it may be judged to be in the domain of the ‘useful arts’, it could not reasonably be considered to be useful?
  • Is the claim of a type that, whilst it may be judged to be in the domain of the ‘useful arts’ and also be useful, it could not reasonably be considered to be a discovery [in the ‘useful arts’]?

I suggest that the third of these questions is most relevant to the potential constitutional question involved here. Might not SCOTUS reasonably have a view much like this: a claim cannot reasonably be considered to be a discovery [in the ‘useful arts’] if a ‘yes’ answer can be given to any of the following questions:

  • Is the claim to a thought, concept or principle, or something else of this nature?
  • Is the claim divorced from any form of physical object or activity (including claims in respect of business methods) or involves some form of physical object or activity but of a type that is so incidental to the claim to justify a determination that, effectively, the claim can be considered to be divorced from this object or activity?
  • If the claim is to a method, does it do no more than describe the 'what' of something, rather than both the ‘what’ and the ‘how’?
  • Is the claim to a rule or method of performing mental acts or playing games?
  • Is the claim to a pure concept, or pure mental conception?
  • Is the claim in the nature of a truism or tautology?
  • Is the claim to a principle - a proposition that serves as the foundation for a system of belief or behaviour or for a chain of reasoning?
  • Is the claim to an idea about something?
  • Is the claim to an intellectual concept?
  • Is the claim to a mental process?
  • Is the claim to a discovery of something, yet no more than this?
  • Is the claim to printed matter, presented information or to a computer program?

Even if they are generally so-considered, SCOTUS may hold the view that claims of the above-described types cannot be considered to constitute a discovery [in the useful arts]. This is because they are so unbounded/imprecise/unverifiable that society’s interests cannot be well served by them being given patent protection.

Should this be its position, SCOTUS might also have the view that statutory disregard for this perspective leaves the court with a continuing responsibility to articulate its judicial exceptions so as to weed out claims that cannot reasonably be considered discoveries under the constitution, essentially because they are unreasonably pre-emptive. Might it be said that this fundamental reasoning underpinned SCOTUS’ patent ineligible decisions in at least Benson, Flook, Bilski and Mayo, and probably also in Alice?

Finally, my concluding comment on the increasingly loud public statements by lawmakers about the United States’ imperative to maintain its pre-eminence in innovation through reforming the patent system by substantially liberalising its test of patent eligibility. Whilst the intent is reasonable, the question remains of whether it can be achieved this way. Ours is a world in which US nationals/residents are not the only inventors who can obtain a US patent, nor are there restrictions on US nationals/residents being able to obtain patents on their inventions elsewhere the world.

This is a complex and multidimensional subject and it demands deep and nuanced thinking by people with wide-ranging skills and perspectives.

Ian K Shepherd

Founder and managing director | Alice Corporation