What to do about “Alice”?
The US Supreme Court’s “Alice” decision has invited us all to a Mad Tea Party. What fun! But if you like logical coherency, or even just want to keep from crashing the economy, you won’t find this here.
Attorney Louis Hoffman, writing in ipwatchdog.com, sums up some of these recent “Alice” problems nicely.
Damaging the economy:
As Louis points out many important areas of US technology are based on software, business methods, and biotechnology. The USPTO has recently taken upon itself to reject many patents in this area. However, this loss of patent coverage can impede the economy. It makes investments difficult, and/or drives inventions underground in the form of trade secrets.
What about actual (written) patent law?
Article I, Section 8, Clause 8 of the US Constitution has empowered Congress to: “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.“
Congress has done so. It determined under 35 USC 101 that: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
The US Supreme Court has given itself the power to override Congress, however. In Alice, they chose to exercise this power. In this regard, Attorney John Duffy writes in Scotusblog: “The uncertain expansion of judge-made exceptions to patentability” points out some interesting implications of this decision.
If you want to know what’s important about this case, it’s right there. The Court acknowledges that the judge-made “exclusionary principle” has the potential to “swallow all of patent law”. “All patents” are at some level based on the very things that can’t be patented under the judge-made doctrine.
Decisions, decisions: So the Alice decision, read too broadly, produces an unconstitutional result. At some point, there will be likely corrective action. However, some inventors, particularly business method inventors, have to address some patents today. File a patent and risk an “‘Alice” rejection, or don’t file a patent and be certain that the invention will become public domain?
2022 postscript: As of 2022, the Federal Circuit and the USPTO has done some damage control. This is summarized in the 2019 PEG and MPEP 2106. However significant damage remains.