Patent-Eligible Processes: An Audience Perspective

Abstract

Many of the problems with modern patent-eligibility analysis can be traced back to a fundamental philosophical divide between judges who treat eligibility as the primary tool for effectuating patent policy and those who take patent-eligibility as nothing more than a coarse filter to be invoked in rare cases. After several years in which the coarse filter approach seemed to have the upper hand, the eligibility-as-king approach now is firmly in ascendancy. This Article, resists that trend, exploring more centrist approaches to patent-eligibility, particularly in the context of process inventions. This Article first examines the practice of undertaking an eligibility analysis with no antecedent claim construction; then concludes that this practice is problematic, drawing on the authors’ prior work concerning the design of patent law rules in view of the audience for those rules. This Article also assesses the unfortunate renaissance of the “inventive concept” inquiry, arguing that the Court’s new embrace of that inquiry is a mistake that permits judges to privilege eligibility to the virtual exclusion of all other patentability doctrines.

Keywords: patentable subject matter; eligible subject matter; patent; claim construction; processes; methods; obviousness; inventive concept; alice; cls bank; bilski; mayo; prometheus