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The Mis-Adventures of Alice

By Wei Wei Jeang


The Patent Eligibility Restoration Act (PERA) and Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act are bipartisan senate bills introduced in 2023 to rectify the nonsense and confusion inflicted by the SCOTUS decision, Alice v CLS Bank, a decade ago. The detrimental economic impact of Alice is hard to fathom --

hundreds of patents, probably more, fell by the wayside. Federal Circuit appeal court judges have called the Alice framework “unworkable” and “incoherent” (Interval Licensing LLC v AOL Inc). All 12 judges of the United States Court of Appeals for the Federal Circuit have lamented the sorry state of the patent eligibility issue engendered by Alice. Despite repeated petitions for certiorari and the solicitor general’s recommendation that the court clarify the law, SCOTUS has not taken a Section 101 case since 2014.


If these bills become law, the patentability question would largely be analyzed under Sections 102 (novelty), 103 (obviousness) and 112 (written description requirement, enablement, and best mode) instead of muddying the water by bringing in Section 101.

The PREVAIL Act attempts to overhaul the current post-grant practice at the USPTO to address prevalent concerns that the Patent Trial and Appeal Board (PTAB) has weakened US patent protection by providing an over-zealous forum where patent claims that should be patent-eligible are consistently invalidated.

PERA attempts to deal with the mis-guided Alice ruling along with the Mayo and Myriad decisions that followed, plus all of their progeny at the Federal Circuit, PTAB, and USPTO examination levels. If passed, PERA would return us to a time when the Bilski case ruled and patents are not such a crapshoot. PERA removes outright the "judicial exceptions" to eligibility fabricated by the Alice court and limits the application of Section 101 to a statutorily defined set of exclusions:

  • mathematical formulas that are not part of a useful process, machine, manufacture or composition of matter;

  • economic, financial, business, social, cultural or artistic processes – unless the process cannot practically be performed without using a machine or manufacture;

  • mental processes performed solely in the human mind;

  • natural processes occurring in nature absent human activity; and

  • unmodified human genes and natural materials – unless they are isolated, purified, enriched or otherwise altered by human activity or otherwise employed in a useful invention.

By gutting the Alice two-part test, some sense of logic would be returned where claims that clearly describe patent-eligible subject matter no longer become grossly mis-characterized by judges who clearly lack technical expertise. One such example is American Axle v. Neapco, where the Federal Circuit literally stated: “[a] claim to a method of manufacturing [a shaft assembly of a driveline system] can be directed to a natural law” and therefore patent-ineligible. Never mind that all things are governed by natural laws like gravity, including methods of manufacturing a drive shaft.

Even the PTAB, a panel of administrative patent judges who should know better, construed three independent claims reciting an apparatus, a method, and a computer program stored on computer readable media as being "represented" by the method claim, and their analysis led them to pronounce that all three claims are directed to a mental process that can be performed in the human mind and therefore not eligible for patent protection (Ex parte PHILIP E. VASEY).

Those who understand the need for stronger patents and those who desire more predictability in the patent process can only hope that PREVAIL and PERA will lead us out of the rabbit hole and out of the mis-adventures brought on by Alice.



*The views expressed in this blog post are exclusively those of the author and do not represent the opinions of any other member of Fulton Jeang PLLC.

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