Subject Matter Eligibility in the Information Age
21 Pages Posted: 6 Jan 2016 Last revised: 16 Feb 2018
Date Written: January 1, 2018
Patent systems have not successfully adjusted to the advent of the Information Age. Law developed during the Industrial Age generates harmful distortions when faced with process-based inventions that result in new and useful information. Congress and the courts have attempted solutions, but they are unsatisfying in aspects of repeatability and lack of coherent separation of subject matter eligibility and patentability, with such separation seemingly implicit in the scheme of the patent act. A unifying doctrine of eligibility for information inventions is needed that adheres to standing patent law, court procedures, and normative expectations. Courts should require that process-based inventions have a construed result as a matter of law. Current Markman procedures should be expanded and treated as both eligibility and preliminary patentability phases of the validity inquiry. There is a bar on inventions considered to be abstract ideas, as well as a bar on patenting printed material. Finding disqualifying abstraction in eligibility and disqualifying abstraction in patentability requires different tests. If a process-based invention’s result is found to comprise information, a new test for eligibility should be applied. The current Alice test for eligibility should be limited to the patentability inquiry. The literal root of the word abstract means to “draw away”, or consume. The proposed eligibility test requires that the information-consumer of a process-based invention’s result may not be a human being. Because non-human intelligences are a new fact in the world, products of human ingenuity, and essential actors in the Information Age, if the information-consumer is non-human, the information result of such a process-based invention should be patent eligible, subject to statutory and common law patentability requirements. There have been other proposed approaches to solving this problem, but all fall short for various reasons. This proposed new test focusing on the information-consumer is simple to apply across the arts; is technology neutral, intuitively appropriate, empowering of innovation in the Information Age, and highly fitted to American ideals.
Keywords: patent law, subject matter eligibility, alice 101, bilski, DDR, abstract idea, EPO
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