Patent Eligibility in Flux: Ten Years After Alice

  • January 29, 2024

By: John T. Spangenberger

Examining the Patent Eligibility Restoration Act of 2023 & What’s Next

In this second installment of L&A’s Intellectual Property Year-in-Review video series, partner John Spangenberger takes us through the frustrating patent eligibility landscape in the decade since the Supreme Court’s landmark Alice decision, and what lies ahead for patentees and practitioners with the proposed Patent Eligibility Restoration Act of 2023.

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Despite the importance of software-based technologies in an increasingly digital world, inventors and practitioners alike remain frustrated with the lack of clarity around their patent eligibility under 35 U.S.C. § 101.

A Decade After Alice

In the 10 years after the Supreme Court’s landmark Alice decision, little has been done to provide substantial clarification on patent-eligibility jurisprudence—exemplified by a recent denial by the Supreme Court to examine an appeal from the CAFC in RealTime Data v. Array Networks. In this case, Judge Newman lamented that the issues at hand properly arose under § 112 as enablement issues, not § 101 patent-eligibility issues. This is a familiar frustration for practitioners accustomed to arguing about what is routine and conventional—issues seemingly more appropriate for a § 102 or § 103 analysis—in a § 101 analysis.

Hope for Clarity Lies in the Legislature

The bipartisan Patent Eligibility Restoration Act, proposed in the United States Congress in June 2023, acknowledges the confusion and inconsistency in dealing with patent eligibility within the US Patent Office and the courts. The Act proposes to remove judicial exceptions to patent eligibility altogether, while amending § 101 to identify some eligibility exceptions already familiar to practitioners. Mathematical formulas, purely mental processes, natural materials, and human genes will remain unpatentable. Also excluded from eligibility will be processes that are substantially economic, financial, business, social, cultural, or artistic, if those processes can practically be performed without a machine or manufacture.

Better Late Than Never?

The Act offers some long wished for provisions to practitioners and patentees suggesting that patent eligibility should be assessed without regard to whether a claim element is routine or conventional, without consideration of prior art, and without regard to sections 102, 103, or 112. Notwithstanding the uncertainty as to whether the Act will be passed—and whether it would survive constitutionality challenges—legislative aides affiliated with the Act hastened to remind us that patent legislation often takes at least 10 years to be enacted. But with the current state of affairs with patent eligibility jurisprudence in the judiciary, help from the legislature would be better late than never.

The information provided in this video does not, and is not intended to, constitute legal advice; instead, all information, content, and materials are for general informational purposes only. Viewers should contact an attorney to obtain legal advice with respect to any particular legal matter.
© 2024 Lando & Anastasi, LLP


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