Deciding what inventions are eligible for patent protection has bedeviled courts, lawmakers, and practitioners for nearly a decade, but recent developments may soon help resolve the conundrum.

As explained here, over the summer, Sen. Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2022, which aims to clarify this murky area and generally broaden the range of eligible material. And this week, Kathi Vidal, director of the United States Patent and Trademark Office (USPTO), published dozens of public comments about the USPTO’s own eligibility guidance, just as a key court rendered a precedential decision about the subject.

In 2014, the Supreme Court, in Alice v. CLS Bank, restricted the scope of the types of inventions deemed eligible for patenting under Section 101 of the Patent Act. Justice Clarence Thomas held that patent applications must claim something “significantly more” than an abstract idea, natural phenomenon, or law of nature in order to receive patent protection. The invention at issue in Alice involved third-party intermediation of financial risk, and the high court ruled that this advance represented little more than the automation of a concept already long performed manually by human beings.

Fast forward eight years, and the US Court of Appeals for the Federal Circuit, the exclusive venue for appeals of patent cases, decided that another computerized implantation of previously existing manual technology did not qualify for protection. In IBM v. Zillow, the court held that IBM’s patent on mapping overlays was both directed to and not significantly more than the abstract idea of changing opacity and emphasis of a display, shown below.

The trial court ruled that the patented invention “could be performed by hand, using a printed map and related list of items on the map, a transparent overlay, a wet-erase marker, a blank sheet of opaque paper, and a knife or scissors.” And Circuit Judge Todd M. Hughes, writing for the appellate court, concurred, noting that “we have repeatedly held claims ‘directed to collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner’ to be abstract.”

Around the same time, individuals, companies, and industry groups weighed in on the USPTO’s current eligibility guidelines, which Director Vidal’s predecessor, Andrei Iancu, issued in 2019. The comments were decidedly mixed, with the computer software and hardware industry largely critical and companies and groups who rely more heavily on patents generally supportive.

Groups like United for Patent Reform, which counts Adobe, Ford, Meta, and other tech companies as members, asserted that the guidelines constitute “instructions that are contrary to controlling precedent from the Court of Appeals for the Federal Circuit and the Supreme Court” and create “a significant danger that examiners will allow patents that a court could later strike down as ineligible.” Similarly, the Computer and Communications Industry Association, whose members include Google, Intel, Samsung, and Yahoo, among others, contended that the USPTO’s guidance “enabled the issuance of patents that should never have been issued, hampering innovation in these crucial areas.”

By contrast, the Innovation Alliance, which comprises AbbVie, Dolby, Qualcomm, and other companies, wrote that the current guidelines have “provided applicants with increased clarity and consistency” and “resulted in the Office issuing patents that are robust and reliable.” The group also “applaud[ed] Senator Tillis on the introduction of the Patent Eligibility and Restoration Act of 2022.”

Those favoring eligibility reform, including the Tillis bill, will likely draw comfort from the favorable public comments and lament the Federal Circuit’s ruling in IBM v. Zillow. Meanwhile, groups opposed to reform will seize on the critical comments and celebrate the Zillow decision. The debate will continue as the rising tide of technology—and the ideas behind each novel innovation—continues to wash against the shore of our statutes, gradually shaping them bit by bit.

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