Subject Matter Eligibility in the Information Age

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.

Martin Snyder, of Main Sequence Technology Inc., has developed a possible solution, and a link to his paper, entitled "Subject Matter Eligibility in the Information Age," can be found here.

Comments

[Martin Snyder]

The questions I usually get involve the construction of a result: it does not need to be an exact, complete description of the result (ideally it would be) but must characterize the result as either information, some novel structure, or something else in order to reach a determination of abstractness.

Another is the use of human consumption within a method- yes that is not a problem so long as the result of the process is not information and the infringing act is human consumption.

Yet another is the novel legal step of separating abstraction at eligibility from abstraction at patentability- I think that's essential in following the bifurcated scheme of the patent act, and is completely in-line with the underlying purpose of the judicial exception for abstract ideas.

Thanks much for the post Joseph!

[M]

So what's the test? I don't have time to read a 22 page article.

[skeptical]

M,

It is a reconceptualization of patent law concepts of 101.

[Martin Snyder]

Software cannot be treated as machines, compositions of matter, or manufactures; only as methods.

The test is:

1) is it a method patent?
2) if yes, is the result of the method information?
3) if yes, is the consumer of the information a human being?
4) if yes, the method is ineligible.
5) if no, the method is eligible, but must be analyzed for patentability under Alice.

Human consumption of information is the event that invokes an "abstract idea".

[skeptical]

Mr. Snyder,

Software is not a method.
The execution of software is a method.

Software is a manufacture - created by the hand of man with the sole purpose of being a machine component.

I do not understand why you seek to make a difference that is so misaligned with reality.

I daresay that you are being merely lazy (and more than somewhat misguided) by the fact that human language most easily (and most clearly) uses language "of action" to describe the manufacture that is software, and so presumptively declaring that software IS the execution of software. This is a clear factual error that results in a clear legal error in your attempt to reconceptualize the patent law of 101.

Further, as has been pointed out, ALL utility of all patents have as the consumer of that utility a human being. Your attempted treatment of utility (vis a vis "consumption") is suspect at best.

Further still, patent law has long permitted (and justly so) the interaction of human consumption of information within integrated claims that do not fall within the "abstract" concern of something TOTALLY (and only) within the human mind. Your attempt to parse out and excise something in your reconceptualization does not account for this type of intermingled claim.

Further still, your "version" of Alice (apparently redesignating some result of the case to be an actual application of law under 102/103/112) is not what happened in the Alice case. The Court did NOT apply that law, so your step 5 does not reflect a workable step.

Whether you will take these points to heart, or merely attempt to discard them as not fitting your worldview, well, as to your embracing the existence of concepts already present in this domain, I remain...

[Martin Snyder]

Well then,

I have dealt with each of your objections in the past but I may as well add them to this thread.

1) Software as a manufacture: sez you. Not sayeth a great many others, including myself. Software is a set of instructions that a machine designed to interpret those instructions may run. This is analogous to the music fed to a player piano or the design fed to a loom.

As a set of instructions, software represents methods; rather than a manufacture, the software is a work of authorship. It cannot be a manufacture, as it is not a tangible, physical item. Your reality is just that. As software is executed, it is the machine it's running on that is the manufacture, not the software, which remains a method of operating that machine.

2) Utility that a given patented invention provides other than information consumed by a person is of a different character than information consumed by a person. A new alloy, or a better machine, or a hole in the ground, or a new medicine, or an improved process which results in something other than information are not abstract in their utility- and the bar on "abstract ideas" would not apply to that utility or that invention at the eligibility step.

3) I stated clearly and state again: events wholly in the human mind are permissible toward a result, so long as the result of a method is not information consumed by a human being. I have clearly accounted for intermingled claims, but not an intermingled result, which is unacceptable in light of the bar on inventions of abstract ideas.

4) The courts have (thus far) not yet recognized that abstraction at eligibility is a different inquiry than abstraction at patentability. This is the key step required for my proposed doctrine to resolve the current problems with the Alice test and information inventions in general. I am under no illusion that such a bifurcation has taken place, but it should both to align with the scheme of the patent act and the objective reality that inventions in general and inventions in specific have different relationships to the patent laws.

5) Regardless of what you say, many expert observers are not satisfied that "process" or "abstract" have been narrowed to a useful, repeatable extent in the law and instead are construed case by case in highly unreliable ways. Deny this as you wish, but it is an absolute fact as of this date.