By Joseph Herndon --
The test for what is patentable subject matter under 35 U.S.C. § 101 in the United States has become quite difficult to understand. In Alice Corp. v. CLS Bank, the Supreme Court provided a two-step test for distinguishing patents that claim patent ineligible laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. The first step requires a court to determine if the claims are directed to a law of nature, natural phenomenon, or abstract idea. If not, the claims pass muster under § 101. A court applies the second step only if it finds in the first step that the claims are directed to a law of nature, natural phenomenon, or abstract idea. The second step requires the court to determine if the elements of the claim individually, or as an ordered combination, "transform the nature of the claim" into a patent-eligible application. Step two has been described as a search for an "inventive concept".
Many courts have complained that identifying whether a claim is "directed to an abstract idea" under step one of the Alice test is not always a simple undertaking. Without a bright-line test, whether claims will be considered to satisfy 35 U.S.C. § 101 has become unpredictable at best. With many court decisions, it would seem that the court could just as easily have come to the opposite decision. Some bright-line rule of course would be welcomed, but I recognize that developing a single rule that applies to all technologies is difficult.