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


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. 

99 J. Pat. & Trademark Off. Soc’y 4(2017)

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