The Three Faces of Prometheus: A Post-Alice Jurisprudence of Abstractions

Abstract

While Alice v. CLS Bank has confirmed that patent claims require a further “inventive concept” beyond an underlying abstract idea or law of nature for patent-eligibility, there is little agreement on what defines either an “abstract idea” or an “inventive concept.” Resolving that uncertainty is critical to determining the patent-eligibility of software claims beyond the simple “do it on a computer” type invalidated in Alice. This Article argues that the rationale and two-step analysis articulated in Mayo and Alice represent a fundamental reorientation of the Supreme Court’s jurisprudence, and provide a principled reason to transcend the Court’s earlier § 101 cases. Based on the structure of the Mayo/Alice test, this Article argues for a differentiated framework of “inventive concept,” requiring inventive application for most abstract ideas, but only non-generic application for most laws of nature. Under this framework, two key classes of subject matter remain patent-eligible: claims that do more than reveal the results of an underlying law of nature, and claims to specific and inventive information-processing techniques.

Keywords: patents, patent-eligible subject matter, software

JEL Classification: O34