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Tanner Mort

Abstract

What is an abstract idea? Is it merely an idea that cannot exist in concrete form? Or is there more to it? The term “abstract” is generally defined as “existing in thought or as an idea but not having a physical or concrete existence.” If this is the correct definition, then how can something physical be abstract? For almost five years now, the United States Patent and Trademark Office (USPTO), the courts, and even some of the most experienced patent practitioners have wrestled with this question. On June 19, 2014, the United States Supreme Court handed down its decision in Alice Corp. v. CLS Bank International, significantly curtailing the issuance of software and business method patents during the midst of the world-wide Digital Revolution. What was considered a narrow issue before the Court, unexpectedly turned into what most scholars might consider to be the most disruptive Supreme Court decision regarding subject-matter eligibility in the history of the U.S. patent laws. On certification before the Court was the issue of whether a genericcomputer implementation of using a third-party intermediary to mitigate settlement risk was a patent-eligible invention, or instead a patent-ineligible abstract idea. In answering this question affirmatively as to the latter, the Court seemingly moved closer to putting an end to the issuance of software and business method patents. To make matters even worse, the Court was reluctant to offer much guidance for determining whether different patents and patent applications claiming similar subject-matter were still patent-eligible. Since the Alice decision, however, the United States Court of Appeals for the Federal Circuit, in addition to the USPTO, have found ways to slowly revive the issuance of such patents, as well as provide some clarity as to what constitutes a patent-ineligible abstract idea. In addition, members of Congress have proposed solutions to the problem in the form of amending 35 U.S.C. § 101; however, getting members of Congress to back amendments to the patent law has proven to be another challenge. Thus, in light of these circumstances, including the fact that the United States is moving into the fourth phase of the Digital Revolution, this paper discusses why Congressional action is needed to determine just what type of inventions are patent eligible so as to “Promote the Progress of Science and the Useful Arts” as mandated by the United States Constitution.

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