Examining Patent Eligibility

St. John's Law Review, Forthcoming

72 Pages Posted: 20 Mar 2023

See all articles by Charles Duan

Charles Duan

American University Washington College of Law

Date Written: March 14, 2023


The doctrine of patentable subject matter eligibility under 35 U.S.C. § 101 has been the locus of major controversy, especially after the Supreme Court’s rearticulation of that doctrine in its 2014 decision Alice Corp. Pty. Ltd. v. CLS Bank International. Critics contend that the decision wrought dramatic changes that unduly constrained patent eligibility in the computer technology field, to the detriment of innovation, national competitiveness, and other interests. These claims have driven numerous calls for legislative reform and judicial action.

Yet Alice was not nearly the legal revolution it has been made out to be. The real change occurred in 2011, with a little-noticed Federal Circuit decision that revived an archaic and controversial doctrine on software patent eligibility. Empirical analysis of thousands of patent application and examination records suggests that this decision gave way to a flood of software and business method patents in the next three years. In context, then, Alice’s predominant effect was to undo this appellate decision. Even in fields seemingly the most impacted by Alice, this Article finds that the decision largely acted only to restore patent examination outcomes to their pre-2011 status.

If this account is even just part of the eligibility doctrine story, it reframes the ongoing debate about § 101. Most importantly, it throws into question prior empirical studies of Alice’s effects on patenting activity, insofar as those studies have used the apparently anomalous 2012–2014 period as a baseline for comparison. It undercuts predominant narratives about Alice that have driven calls for reform. And it recommends caution in legislative changes to the patent eligibility doctrine, in view of the potential for even minor rules to have outsized systemic effects.

Keywords: patents, software development, intellectual property, technology policy

JEL Classification: O31, O34, O43

Suggested Citation

Duan, Charles, Examining Patent Eligibility (March 14, 2023). St. John's Law Review, Forthcoming, Available at SSRN: https://ssrn.com/abstract=4388598 or http://dx.doi.org/10.2139/ssrn.4388598

Charles Duan (Contact Author)

American University Washington College of Law ( email )

4300 Nebraska Ave NW
Washington, DC 20016
United States

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