PERA increases patents

2. What specific types of inventions would become newly eligible for a patent under PERA, that are currently not patentable?

A range of inventions across all sectors of the innovation economy would become eligible again that have been excluded as such from legal protection by the patent system, including classic industrial inventions, biotech inventions, and high-tech inventions.

There are far too many examples among the thousands of patent claims invalidated by courts and the PTAB applying the Mayo-Alice inquiry, and so a listing of illustrative examples will have to suffice here. What follows is a representative list of inventions that the USPTO and courts have long recognized as patentable inventions over the past hundred years. In some of these cases, the inventions represent industrial processes, an invention that was defined and recognized by the U.S. patent laws as patentable from as early as the 1790s. It bears emphasizing that these inventions are patent eligible, which means these inventions clearly fall under the meaning of “useful Arts” that the Constitution authorizes Congress to promote in creating a patent system. Whether these inventions are in fact new, nonobvious, or properly disclosed, per the patentability requirements set forth in other sections of the Patent Act, remains to be seen—but courts never reached these inquiries and instead summarily rejected them as a matter of law from the patent system as such.

Today, courts and the PTAB are applying the Mayo-Alice inquiry and concluding that manufacturing or other industrial processes, electronic devices and processes, and specific medical tests are only “abstract ideas” or “laws or nature” that are summarily excluded from patent protection as such. Some examples of these decisions are as follows:

An award-winning process for manufacturing steel. See Ficep Corp. v. Peddinghaus Corp., 2023 WL 5346043 (Fed. Cir. 2023) (unpublished opinion) (holding that a steel manufacturing method is an unpatentable “abstract idea”).

A computer program for compressing data for increasing storage capacity. See Realtime Data LLC v. Array Networks Inc., 2023 WL 4924814 (Fed. Cir. 2023) (unpublished opinion) (holding a computer program that compresses data to maximize storage capacity on a hard drive or other computer device is an unpatentable “abstract idea”).

A non-invasive medical test for evaluating a body’s rejection of an organ donor recipient. See CareDx, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022) (holding a non-invasive diagnostic test for determining rejection of recipient of organ donation is unpatentable “law of nature”).

A digital camera using multiple image sensors. See Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021) (holding the use of image sensors in a digital camera is an unpatentable “abstract idea”).

An industrial method for manufacturing an automobile axle. See American Axle & Manufacturing Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) (holding an industrial method for making automobile axle is an unpatentable “abstract idea”).

A portable electronic heart monitoring device to diagnose heart attacks and other cardiac events. See Braemar Manufacturing, LLC v. ScottCare Corporation, 816 Fed. Appx. 465 (Fed. Cir. 2020) (unpublished opinion) (holding a portable electronic heart monitoring device is an unpatentable “abstract idea”).

A computer system for controlling access to a cellular telecommunications system. See Ericsson Inc. v. TCL Communication Technology Holdings, 955 F.3d 1317 (Fed. Cir. 2020) (holding a computer system used in controlling access in modern cellular telecommunications systems is an “abstract idea”).

An electronic, wireless garage door opener. See Chamberlain Group, Inc. v. Techtronic Industries Co., 935 F.3d 1341 (Fed. Cir. 2019) (holding an electronic garage door opener is an unpatentable “abstract idea”).

An innovative antibody test for diagnosing and treating neurological disorders. See Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 915 F.3d 743 (Fed. Cir. 2019) (holding an antibody test for neurological disorder is an unpatentable “natural law”).

A diagnostic test for detecting the risk of cardiovascular disease in a patient. See The Cleveland Clinic Foundation v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017) (holding that diagnostic test for cardiovascular disease is an unpatentable “law of nature”).

An industrial process for operating an oil-drilling derrick. See TDE Petroleum Data Solutions v. AKM Enterprise Inc., 657 Fed. Appx. 991 (Fed. Cir. 2016) (holding that a method of operation of an oil derrick is an unpatentable “abstract idea”).

A list of patent applications for physical machine inventions, such as a coffee machine, that examiners rejected as unpatentable “abstract ideas” under the Mayo-Alice inquiry is here: Dennis Crouch, Eligibility and Physical Products, PATENTLYO (March 1, 2024), https://patentlyo.com/patent/2024/03/eligibility-physical-products.html. All of these machines have long been patent-eligible inventions in the U.S. patent system, and they should be protected by patents assuming these inventions are novel, nonobvious, and properly disclosed in the patent applications.

3. How does the current state of the law impact smaller innovators and academic research?

The U.S. has long been regarded as the world leader in securing property rights in technological innovation, granting patents for next-generation inventions and discoveries when the rest of the world hesitated. Professor Zorina Kahn, a leading economic historian, concludes that the U.S. patent system has been successful precisely because it consistently secured legal protection for the fruits of inventors’ labors.6 This truth is confirmed by the spread of patent laws across the world throughout the nineteenth and early twentieth centuries that were explicitly modeled on the U.S. system.7 This pattern of U.S. leadership in securing patents in the next wave of innovation gave birth to the biotechnology, hightech, and mobile revolutions of the past fifty years.8

With this important background context in mind, the economic impact of returning patent eligibility doctrine back to its historical role in the U.S. patent system—a mere threshold inquiry or coarse filter before the more searching and stringent patentability requirements of utility, novelty, nonobviousness, and disclosure—will be positive. The promise of reliable and effective patent rights in the fruits of their inventive labors will reestablish incentives for innovators, startups, and successful companies to make long-term R&D investments. The result will be the same technological and commercial growth that has been the hallmark of the U.S. innovation economy since the early nineteenth century.