Congress should abrogate Alice-Mayo, treating the claimed invention as a whole

The evidence that this contradicts long-standing U.S. patent doctrine is made clear by explaining how the courts’ application of the Alice-Mayo framework today would result in the invalidation of the very first patent that was issued in the U.S. under the first Patent Act of 1790. The first U.S. patent issued was to Samuel Hopkins in 1790 for his discovery of a new method of making potash.62 His novel method comprised well-known steps at the time, such as burning and dissolving ash. Hopkins’ claimed discovery was in the timing and order of the steps in the process.63

If Hopkins’ patent were challenged today and the courts applied their now-established methodology in construing it under the Alice-Mayo framework, they would first find that the elements of timing one’s steps in a process and using heat are abstract ideas, laws of nature, or natural phenomena—and thus ineligible for patent protection. Under the second step of the Alice-Mayo framework, a court would find that Hopkins did not add anything “inventive” to the steps beyond timing and heating contributions, all of which were well-known and conventional at his time. Thus, it is an entirely logical application of the Alice-Mayo framework today to find the first U.S. patent for a process of making potash to be ineligible for patent protection.

This is significant because Hopkins’s patent application was reviewed, approved, and signed by Thomas Jefferson as Secretary of State, who was a member of the three-person committee created under the 1790 Patent Act to review patent applications. Jefferson was both a drafter of some of the early patent laws and is known today for his belief that patents should be granted rarely and for only truly innovative inventions.64 Moreover, Hopkins’s patent was issued under the 1790 Patent Act, which was drafted and enacted into law by the original Framers of the Constitution, who were then serving in the First Congress.65 In fact, the other two members of the committee that reviewed Hopkins’ application and approved his patent were President George Washington and Attorney General Edmund Randolph, both of whom were members of the Constitutional Convention of 1787.

When a set of Supreme Court decisions between 2010 and 2014 claiming to apply a statutory provision that has been in existence since 1790 would, if applied to the first U.S. patent, call into question its validity, this is cause to question if the Supreme Court has rightly followed the law that has existed since the first Patent Act of 1790. It is especially concerning when this first patent was reviewed and signed by two prominent members of the Constitutional Convention (Washington and Randolph) and a prominent Founder (Jefferson) who is largely known today for his skepticism about patents.

Thus, Congress should return the patent system back to promoting and securing innovation, especially for the key biopharmaceutical and high-tech sectors of the U.S. innovation economy in the 21st century that have been hardest hit by the Alice-Mayo framework. It should abrogate the Alice-Mayo framework, reestablish the role of the courts to apply the statutory language it has enacted in § 101, and mandate that courts follow basic legal rules applied historically and in other patentability doctrines, such as that courts must always assess the claimed invention as a whole.