Plan doesn’t cause patent trolls – other requirements for patentability still have to be met

1. Legislative Proposals Prevent Amalgamating Patentability Requirements

Many of the proposals' discretionary limitations are focused on isolating patentable subject matter considerations from other patentability issues. For example, PERA, the AIPLA-IPO Proposal, and the ABA Proposal all explicitly prevent a court from considering any requirement which stems from another section of the Patent Act.207 Thus, proposals for a reformed §101 all focus on reestablishing §101 as a distinct requirement apart from novelty, nonobviousness, or other patentability requirements. This would allow inventions embodying practical applications of "abstract ideas" under the Alice/Mayo framework to proceed to the merits of other patentability considerations, rather than amalgamate all patentability requirements under §101 at the motion to dismiss stage.208

Note that restricting judicial discretion to make eligibility determinations would not open the floodgates to patent trolls and frivolous patents, as the Patent Act holds many other protective backstops.209 Rather, such a change would merely require a judge or patent examiner to make an eligibility decision based solely on §101 grounds before weeding out frivolous patents by applying the Patent Act's other statutory bars. Should a court's discretion be limited to require consideration of §101 subject matter eligibility in isolation, the immediate impact would be a heightened difficulty for alleged infringers in litigation proceedings to dismiss cases involving software or computer-implemented inventions on the pleadings.

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Just because a patent recites eligible subject matter does not necessarily mean the patent is valid. Other requirements of patentability must also be met. See, e.g., 35 U.S.C. §§102, 103, 112 (establishing patentability requirements outside of subject matter eligibility).

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In addition to expressly preventing courts from considering patentability requirements outside of §101 itself, each proposal abrogates the Alice/Mayo framework in part or in full by limiting a court's ability to make eligibility determinations.210 More specifically, each proposal contains clauses which would prevent a court from proceeding to Alice/Mayo step two, wherein a court considers the elements of the patent claim to determine whether it recites an "inventive concept" sufficient to transform the nature of the claim into a patent-eligible application.211 Each proposal largely does so because, as discussed above, Alice/Mayo step two amalgamates patentable subject matter, novelty, and nonobviousness considerations into a single uncertain test.212 By preventing the search for an "inventive concept,"213 disregarding the manner in which a claimed invention was made,214 or preventing a court from considering whether a patent claim element is "known, conventional, routine, or naturally occurring,"215 each proposal further solidifies patentable subject matter as a distinct requirement. Under this rationale, a computer-implemented invention would only be directed to unpatentable subject matter if the inventor is attempting to patent an idea itself absent a discrete implementation, or the inventor merely says, "apply it with a computer."216 Such frivolous patents would be weeded out by the USPTO or handled decisively in federal court, while other patents could proceed to other patentability questions.