Two Stepping with Alice in Justice Stevens' Shadow

L. Rex Sears, Ph.D., J.D. 

Alice Corp. Pty. Ltd. v. CLS Bank International articulated a two-step procedure for determining patent eligibility: “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts”; if so then at “step two, we . . . examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to transform the [concept] Into a patent-eligible application.” Lower-court opinions issued after Alice are structured around and focused on that two-step analysis. But academic commentary has focused on Alice’s assumptions about and implications for “the boundary between an unpatentable principle and a patent-eligible invention,” almost to the exclusion of the two-step inquiry that preoccupies the courts. 


How to Write a Law Review Article

Sean Burke

It is traditional for outgoing Editors-in-Chief at the Journal to write a short note to our readers. While there is no overarching theme to these notes, my predecessors have often discussed their good times at the Journal and the friends they made along the way. This is not one of those essays. 


Patent Eligibility of Online Application Software After Internet Patents Corp. v. Active Network, Inc.

Ping-Hsun Chen

This article analyzes a Federal Circuit decision from 2015, Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015), holding that the claims for a method, computer system, or computer-readable storage medium, for providing an intelligent user interface to an online application were patent-ineligible. Internet Patents may indicate that the possibility of patenting online application software or programming is closed. Reciting a computer or software mechanism in a claim may not be helpful because the computer or mechanism elements may merely implement general functions of a computer, which cannot add any inventive concept into the claim.


Express Employee Patent Assignments: Staying True to Intellectual Property's Credo of Rewarding Innovation

Paul Spiel

Employees often assign away rights without knowing they are doing so, introducing what some have called ”cube-wrap” contracts. In ProCD, the 7th Circuit concluded that shrink-wrap agreements were valid, but the reasoning the court used is not well suited for employment-related patent assignments. Express employee patent assignments impermissibly overreach into an inventor’s past and future and could be deemed unconscionable. Rewarding innovation is ingrained in the U.S. Constitution and is a major justification for patent law itself, but express assignments remove this incentive. Public policy in tandem with unconscionability justifies a reworking of the ways in which employees expressly assign patentable inventions.


Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Mark R. Buscher

The standard for anticipation of a patent claim is seemingly straight forward – a single prior art reference recites each and every element and limitation of the claim. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Yet some interesting wrinkles can occur.


Ethical Considerations in Intellectual Property Law

Leonard Raykinsteen

The U.S. legal system affords certain rights and provides protections for owners of property that result from “the fruits of mental labor,” or so-called “creations of the mind.”1 This kind of property is called intellectual property (IP). IP law, in turn, deals with the rights and protections for owners of IP. These rights and protections are based on federal patent, trademark and copyright laws and state trade secret laws. In general, patents protect inventions of tangible things; copyrights protect various forms of written and artistic expression; and trademarks protect a name or symbol that identifies the source of goods or services.


The Interplay Between User Innovation, the Patent System and Product Liability Laws: Policy Implications

Stijepko Tokic, J.D., LL.M.

Innovation is a heavily used buzzword in the United States of America, and the fixation with innovation has deep roots in American society. It was even suggested that “America is innovation.” The “innovate or die” mindset, famously articulated by Bill Gates in his Congressional testimony in 1998, has been mentioned in at least ten books going back to 1958. Over time, the popularity of the slogan “Innovate or Die” made the slogan itself a business, as it is now commercially sold as a poster.

One of the primary issues in innovation debates is the role of the patent system in promoting innovation. Recognizing the importance of stimulating innovation, the Framers of the Constitution authorized the United States Congress (Congress) “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act of 1790 was the first act enacted by Congress, and the law gave inventors rights to their creations for the first time in American history. While the notion that intellectual property rights are designed to create incentives to innovate, and ultimately to promote innovation, has been repeatedly acknowledged by the Supreme Court of the United States (Supreme Court), many scholars continue to question that notion and argue that the patent system currently does the exact opposite: stifles innovation.



How an Old Non-Statutory Doctrine Got Worked into the § 101 Test for Patent Eligibility

Peter Hecker 

The 35 U.S.C. § 101 test for patentable subject matter laid out by the Supreme Court in Alice has been the subject of complaint by judges and patent practitioners because of its redundancy with the § 103 nonobviousness requirement. This redundancy seems to have come from a common root shared by Alice’s inventiveness requirement and § 103 obviousness. Particularly, § 103 obviousness descended from a mid-nineteenth century doctrine known as the skillful mechanic test, while Alice’s inventiveness requirement appears to have evolved from another old doctrine known as aggregation. Both the aggregation doctrine and the skillful mechanic test assessed whether a patent claim was inventive. In the mid twentieth-century, the Supreme Court clearly stated that the Patent Act of 1952 codified the skillful mechanic test in § 103 obviousness. It is less clear that Alice’s inventiveness requirement descends from the aggregation doctrine. However, the similarity between the two rules, their legal contexts, their purposes, and complaints about them, all suggest that Alice’s inventiveness requirement descended from the aggregation doctrine. If this is true, then the overlap between Alice’s inventiveness requirement and § 103 obviousness likely stems from the common root of inventiveness shared by the old skillful mechanic and aggregation doctrines. 

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