But, judicial exceptions are the reason why this is an issue – it enables too many carve outs for what can’t be patented
Xie & Quinn 23 - Wen Xie & Gene Quinn 10-1-2023 (Wen Xie is a U.S. Patent Attorney and Partner at Global IP Counselors. She is a prosecutor with a comprehensive understanding of the patent process in the United States, Europe, and across Asia, and experience overseeing the prosecution of applications around the world. Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people in IP by Managing IP Magazine, in both 2014 and 2019. From 2017-2023, Mr. Quinn has also been recognized by IAM Magazine as one of the top 300 IP strategists in the world, and in 2021 he was recognized by IAM in their inaugural Strategy 300 Global Leaders list. "What the Patent Eligibility Restoration Act Means for Artificial Intelligence Inventions", IPWatchdog, https://ipwatchdog.com/2023/10/01/what-the-patent-eligibility-restoration-act-means-for-artificial-intelligence-inventions/id=167640/. accessed 5-24-2024) //MSUCB
As is the case with many ambitious endeavors, there will be those who doubt its value. In this case, there are critics who are doubtful of the bill’s effectiveness when it comes to patenting artificial intelligence (AI). Since Alice v. CLS Bank, the high likelihood of an AI invention being found to be directed to an abstract idea has created the worrisome possibility of precluding an entire field capable of generating worlds of foundational technology from patentability. Indeed, it is hard to fathom a world where things like the Star Trek computer, with its endless knowledge base and control capabilities, could be patent ineligible, but that is where we are at present because the very thing that makes AI so useful is its abstract nature, which often defies concrete characterization. One of the most challenging aspects of claiming AI effectively in order to capture its commercial value requires a heavy reliance on functional computer language rather than traditional positive machine or apparatus claiming, as these components are vulnerable to very easy design arounds when it comes to practical AI deployment.
Because PERA would eliminate the foundations of the Alice 2A/2B abstract idea analysis that has proven to be a death knell to many AI claims, there is no doubt that PERA would make things better—perhaps too much, so that it is hard to envision it being enacted as written—especially when some on the pro-patent side want even more. Let us break down how PERA addresses Alice and Mayo and the bill’s impact on subject matter eligibility, particularly the eligibility of artificial intelligence.
Eliminating Step 2A – Judicial Exceptions
The first step of Alice’s subject matter eligibility test is determining “whether the claims at issue are directed to a patent-ineligible concept.” As adopted by the Federal Circuit, under the Mayo/Alice test, the court has assessed whether the claims are directed to a law of nature, natural phenomenon, or abstract idea.
It is under this prong that so much discretion resides on the part of the fact-finder, that is the judge, the PTAB panel or the examiner. Because Alice and Mayo courts failed to establish any test or guideline for how to determine “directed to”, a claim of any form can ultimately be determined to be directed to an abstract idea or law of nature. And that is precisely what has happened, with subjectivity reigning supreme.
Hard to believe that any claim can be found to be directed to one of the so-called judicial exceptions? Look no further than American Axle v. Neapco, where the Federal Circuit literally said the following words: “A claim to a method of manufacturing can be directed to a natural law.” While we have to live with this language, the reality—as if that matters—is the Federal Circuit is wrong. 2+2 does not equal 5 no matter how many times it is repeated, which is essentially the logic behind saying a method of manufacturing can be directed to a natural law.