The Conflation of Patent Eligibility and Obviousness: Alice's Substitution of Section 103

Abstract

The Supreme Court narrowed section 101 patent eligibility to exclude judicially-created categories, including abstract ideas in 1978. The Court has never defined or clarified what falls under the patent ineligible category of abstract ideas. In Alice Corp. v. CLS Bank International, the Court adopted a two-part test to determine whether a patent claimed an abstract idea in a manner that would preempt others from using the abstract idea without infringing. The two-part inquiry provided vague guidance for the lower courts to identify abstract ideas. Additionally, the test emphasizes the addition of an inventive concept to transform the abstract idea into patent eligible subject matter. However, the Court’s inventive concept standard, as written, is misplaced under section 101 because it conflates the separate statutory requirements of patent eligibility and obviousness. This Note assesses the weaknesses in the Alice test and suggests that the Court’s emphasis on preemption should replace the inventive concept inquiry.

Keywords: patent eligibility, alice, obviousness, abstract idea, section 101