Alice-Mayo framework creates too much uncertainty and caused patent denials to skyrocket

Ten years after the Supreme Court decided the last of its four modern patent eligibility decisions, culminating in the Alice-Mayo inquiry in 2014, patent eligibility jurisprudence is now the proverbial millstone around the neck of U.S. innovators. At best, the doctrine remains fundamentally unsettled and indeterminate for inventors, especially innovators in high tech and the life sciences—the two primary drivers of the modern innovation economy. At worst, inventors have achieved a modicum of certainty by adopting to the legal fact that cutting-edge inventions are at substantial risk of invalidation by the courts. They do not apply for patents or they draft patents in ways that no longer properly secure their innovations. In sum, the Alice-Mayo inquiry represents the closing of the doors of the patent system to innovations in healthcare and the hightech sector of the innovation economy. This jurisprudence is significant for several reasons.

First, patent eligibility jurisprudence is no longer “only a threshold test,” as the Court rightly framed the nature of the § 101 inquiry in the 2010 decision in Bilski v. Kappos.40 Since 2014, patent eligibility doctrine stopped serving as only a “coarse filter” that is applied before a court applies the more fine-grained doctrinal requirements of novelty, nonobviousness, and disclosure.41 Instead, the Alice-Mayo inquiry is now an all-pervasive and principal feature of patent law generally, which is an entirely new development in the U.S. patent system. An empirical study by Robert Sachs in 2019 found that court decisions applying § 101 after 2014 jumped 730% with a 659% increase in the number of litigated patents.42 Sachs found that, as “[c]ompared with the five years prior to Alice [reaching back to Bilski in 2009], there has been a 1056% increase in the number of decisions finding ineligible claims, and a 914% increase in the number of invalidated patents” between 2014 (when Alice was decided) and 2019.43 I do not have updated statistics since 2019, but I am unaware of any new study that shows a reversal of this trend since 2014 of substantially higher rates of courts applying the Mayo-Alice inquiry to invalidate patents.

Second, courts continue to apply the Alice-Mayo inquiry in a willy-nilly fashion in which they ignore the longstanding rule in patent law that claimed inventions should be construed and assessed as a whole. Instead, courts are dissecting claims into separate elements to thus finding the patent to be invalid given a finding that a particular element of a claimed invention is an abstract idea or law of nature. There are too many examples to review in this testimony, and thus a few illustrative cases will suffice to demonstrate this fundamental problem.