INSIGHT: Is It Time to Reevaluate ‘Inventive Concept’ Test for Patent Eligibility?

Patent lawyers are so inured to the two-step test for patent eligibility under Section 101 from Mayo v. Prometheus and Alice Corp. v. CLS Bank International that we never question the test’s foundation. But maybe it’s time.

Both U.S. Supreme Court decisions, just two years apart, were unanimous, and the test has since been applied in innumerable cases by trial courts and the Federal Circuit.

Furthermore, eight years has elapsed since Mayo and six years since Alice, which extended Mayo to all technologies. Why examine the test’s foundation at this late date?

The reason is that if the foundation is insufficient to support the stringent test, it may be a fair candidate to be applied more narrowly than before by the Federal Circuit or even eventually reconsidered and perhaps revised by the Supreme Court.

Patentability v. Eligibility

Although both the Mayo and Alice opinions cite to pre-1952 cases, in the era before the insertion into the Patent Act of the requirement of non-obviousness, the court seemed to be analyzing patentability, not eligibility.

Indeed, these decisions employ the word “patentable” throughout. They contain no reference to “eligibility.” Although some cite Section 101, that is not surprising because there was then no Section 103, and Section 102 was seldom applicable because then, as now, it required exact correspondence between the entire list of claim limitations and the teachings of a single prior art reference.

If we review the post-1952 cases, there are only five that Mayo could rest upon: Benson (1972), Flook (1978), Chakrabarty (1980), Diehr (1981), and Bilski (2010). Mayo mentions all five, but rests directly and exclusively on Flook for “inventive concept.”

To my eye, the others neither use the term, nor any equivalent. And, Chakrabarty seems less relevant because it concerned a composition of matter claim, not a method claim. Bilski seems irrelevant as it did not contain any discussion of the inventive concept notion. So Mayo depends entirely on Flook. Mayo, citing Flook, held that because the “additional” limitations beyond the natural phenomenon exception were “well known,” the claim was ineligible, as there was no “inventive concept.”

When we scrutinize Flook, however, it uses the term only twice and without quoting or even citing any precedent. The opinion by Justice John Paul Stevens says simply: “Even though a phenomenon of nature or a mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.”

That was fatal to Dale Flook’s patent application because once the “algorithm is assumed to be within the prior art, the application as a whole, contains no patentable invention.” His patent application claimed a new formula but otherwise its limitations merely mirrored the prior art steps of adjusting computerized alarm limits in an apparatus for catalytically converting hydro carbons in order to sound alarms when safety limits are exceeded.

The opinion earlier provided some historical context. Referring to Funk Brothers Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948) and Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939), Justice Stevens said they suggested: “The process itself, not merely the mathematical algorithm, must be new and useful.”

He next asserts: “We think this case must also be considered as if the principle or mathematical formula were well known.” Putting these observations together, the opinion holds that a claim drawn to an exception becomes patentable only if “there is some other inventive concept in its application.” But neither of these old cases discussed “inventive concept.”

The Flook opinion also refers to Gottschalk v. Benson, 409 U. S. 63, 71 (1972), holding “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case.” Benson otherwise discusses pre-emption, but not “inventive concept.” It thus seems to offer no support for the notion adopted in Flook.

Then, we must consider the impact of Diehr, decided three years later. It clearly held that considerations of inventiveness have no place in the 101 eligibility analysis. Rather, the court says such considerations are “irrelevant.” In fact, Justice Stevens, the author for a 6-3 majority in Flook, complains in his 4-5 dissent in Diehr that the court is “trivializing” Flook’s inventive concept.

Diehr also condemned dissecting claims, which Flook nevertheless expressly did. One could readily conclude Diehr actually overruled at least these aspects of Flook.

Nevertheless, in Mayo, Justice Stephen Breyer repeatedly relied on what was “conventional,” clearly a stand-in for lack of “inventive concept.” Thus was “inventive concept” resurrected from Flook after its burial in Diehr. Yet Mayo purported to follow Diehr as well as Flook, which it expressly recognized as the closest precedents.

Even aside from that, the notion baldly asserted in Flook without citation had no basis in any post-1952 case and no firm basis in earlier cases, either.

The conclusion therefore seems inescapable that an “inventive concept” as the core requirement for eligibility of a claim that includes a judicial exception rests on shaky ground. Hopefully, litigators will help courts explore this issue.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

Judge Paul R. Michel was appointed to the Court of Appeals for the Federal Circuit in 1988 after 16 years of service in the Executive and Legislative branches. He retired as Chief Judge in 2010, advocating since then for improvements in the patent system.