Alice-Mayo explained – it is gutting innovation

Among the many changes in the patent system wrought by the Supreme Court in the past decade were four decisions between 2010 and 2014 on patent eligibility doctrine under § 101.13 These four decisions culminated in the “Alice-Mayo framework”—a new two-factor inquiry that courts and the U.S. Patent & Trademark Office (USPTO) have applied since 2014 in assessing whether an invention or discovery qualifies under § 101 as an invention or discovery that is patentable under the Patent Act even if it is new, useful, and fully disclosed in the patent.14

The Alice-Mayo framework does not apply the statutory text of § 101, but rather the judicially created exclusionary rule prohibiting patents issuing on abstract ideas, laws of nature, or physical phenomena. The two-factor inquiry is: (1) determine whether the patent claims an abstract idea, natural phenomenon, or law of nature that are ineligible for patent protection, and, if so, (2) determine if the patent claims something more that transforms it into a patent-eligible application (an “inventive concept”) of one of these ineligible categories or is this additional activity in the claim merely well-understood, routine, and conventional activity in the art.

As a new framework for applying patent eligibility doctrine in § 101, the Alice-Mayo framework has severely restricted the inventions and discoveries that have long been considered patentable for over two centuries in the U.S. patent system. All of the legal requirements for a valid patent, including that the invention or discovery be eligible for patent protection, are applied by examiners who review patent applications filed at the USPTO. The job of an examiner is to make sure that the applicant is seeking the protection for the fruits of his or her truly inventive labors in creating a new machine or process or in discovering a new composition of matter (such as a molecule that works as a drug treatment for cancer).