Returning Patentable Subject Matter to Anything Under the Sun Made by Man

Dec 29, 2021

Katherine L. O’Sullivan

When the founding fathers laid the bedrock of patent law, they created a list of conditions that an invention must meet to be patentable. An invention must be novel, non-obvious, described in a manner which allows others to practice it, and more. But the cardinal condition is that the invention be of the kind that can be patented—that the invention falls within a category of patent eligible subject matter. This fundamental condition, this threshold question, is codified in § 101.

On its face, 35 U.S.C. § 101 is not complicated. The statute simply lists patent-eligible inventions as processes, machines, manufactures, compositions of matter, or improvements thereof. Early case law set forth three narrow exceptions to these categories: laws of nature, natural phenomena (or products of nature) and abstract ideas. However, in recent years the courts have modified the requirements of § 101, greatly expanding the once narrow ineligible subject matter categories. The two-step eligibility test that emerged out of Mayo, Myriad, and Alice (hereafter referred to as the Mayo/Alice two-step test) took these once narrow ineligible subject matter categories and gave them broad reach, rendering entire classes of inventions ineligible. As a result, § 101 has transformed into an unwieldy and unworkable standard causing confusion and frustration. Instead of adding clarity, the courts’ attempts to resolve these questions of patent eligibility have enlarged the problem, producing puzzling case holdings. It is clear that continuing down the Alice rabbit hole will not fix the problem, guidance is needed in the form of a legislative solution.