Judicial exceptions are discouraging innovation and investment in cutting edge technologies and risk the collapse of US competitiveness

Courts have been grappling with judicially imposed patentability standards since 2014, when the U.S. Supreme Court issued a series of decisions attempting to establish guidelines for what is—or, more importantly, is not— eligible for patent protection in the U.S. Most notably, in Alice Corp. v. CLS Bank, the Supreme Court held that laws of nature, natural phenomena, and abstract ideas were unpatentable, absent a showing of some additional “inventive element.” In Alice and in many cases since, the exception has been used to invalidate software patents, but it has also been applied to patents involving DNA sequences and artificial intelligence-related works. The 2014 rulings were aimed at updating patent law to address issues raised by new technologies. But the result has been to make patentability standards too unpredictable and to render many innovations unpatentable in the U.S., though eligible for patent protection in other countries, says Chen, who holds a Ph.D. in physics and has been a practicing patent lawyer for nearly a decade. “The general consensus is that the whole process has become somewhat confusing,” he says. “The statute itself is quite broad, but the judicial exceptions are applied inconsistently. The framework consists of the judicial exceptions to the statute to render a subject matter ineligible and then provides ways out of the judicial exception that are vague. So the framework is really a system of exceptions to the exceptions to the statute. Chen says the unpredictability as to what is patentable exists not only among the courts but even within the U.S. Patent and Trademark Office, where different patent examiners have differing views on how to apply the Alice standard of judicial exception to the statutory definition of what is patentable and what constitutes sufficient limitations to take a claimed subject matter out of the judicial exception. In a 2021 survey by the USPTO, nearly two-thirds of respondents reported a negative view of current patent eligibility jurisprudence, saying it undermines innovation and discourages investment in cutting-edge technologies, not only because of its ambiguity but also because it rules too many innovations ineligible for patent protection. Critics of current patent eligibility jurisprudence say the restrictions leave unprotected some innovations that could be patented in Europe and China, and that the current framework has hurt U.S. competitiveness.