Subject Matter Eligibility in the Information Age

Abstract

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 an identified result, which should be construed as a matter of law. Current Markman procedures should be expanded and treated as both eligibility and probable cause 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. These longstanding bars exist because virtually any human activity may be characterized as a process, thus bringing unlimited patent rights into direct conflict with other Constitutional rights. Despite those bars, thousands of computer and biotech patents have issued that constructively cover information and/or the utility derived therefrom. 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 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. The current Alice test should be applied to the patentability inquiry. In this paper, I describe the statutory basis to support this new doctrine, apply the new doctrine to past cases and well-known inventions, and examine other proposed approaches to solving these problems, each of which falls 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, and highly fitted to American ideals.