The 'Inventive Concept' Test for Patent Eligibility Contravenes Congressional Intent

Abstract

Substantial scholarship addresses the “inventive concept” patent eligibility test that emerged from the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International, but virtually none evaluates deeply the test’s consistency (or inconsistency) with Congress’s intentions in creating the United States Court of Appeals for the Federal Circuit, as expressed as Congress promulgated and passed the Federal Courts Improvement Act of 1982. This article develops and presents that evaluation, against the backdrop of Congress’s passage of the 1952 Patent Act beforehand; its roughly contemporaneous passage of the 1980 Computer Software Copyright Act; and finally, its subsequent passage of the Leahy-Smith America Invents Act in 2011. The article concludes that the Court’s “inventive concept” test defies Congressional intent. The article also observes that, given the current force of the same public policy concerns that animated Congress in creating the Federal Circuit — namely, spurring innovation as a means to furthering domestic industrial strength and, correspondingly, national economic competitiveness — 40 years ago, the test’s deviation from Congress’s intentions deserves renewed focus by policymakers and even the Court.

Keywords: patent, 101, subject matter eligibility