An "Exclusive" Application of an Abstract Idea: Clarification of Patent-Eligible Subject Matter After Bilski v. Kappos

I. Introduction In the United States, a patent application is examined to determine whether the invention claimed in the application is novel under 35 U.S.C. § 102 and not obvious under 35 U.S.C. § 103 before a patent is issued for the invention. Prior to an extensive examination of a patent application under these provisions, an invention must pass the threshold requirement1 of patent eligibility under 35 U.S.C. § 101. 2 Section 101 states that if an invention is a "new and useful process, machine, manufacture, or composition of matter," the invention may be considered for patenting in light of the other provisions of the Patent Act.3 The categories of subject matter eligible for patenting are broad;4 however, the U.S. Supreme Court has established three exceptions to patent eligibility under §101: "laws of nature, physical phenomena, and abstract ideas."5 The "abstract idea" exception has been used and analyzed by the Supreme Court several times,6 but the Court has never precisely established a definition or a reasoned foundation for the "abstract idea" exception. Recendy, the Supreme Court reexamined the patent eligibility inquiry of § 101, and the "abstract idea" exception, in Bilski v. KapposJ The Bilski Court held that the Federal Circuit's "machineor-transformation" test is not the sole test for the patent eligibility of processes, overruling the decision below.8 Nevertheless, die Supreme Court found that die invention in the patent application at issue was an unpatentable "abstract idea" by comparing it with die inventions in its previous decisions in Gottschalk v. Benson9 Parker v. Flook10 and Diamond v. Diehr.11 Unfortunately, the Court in Bilski leaves many questions unanswered, including: What is an abstract idea? Why is an abstract idea an exception to patentable subject matter? What is the basis for concluding that an invention is an abstract idea? How is a patent applicant to know if an invention is an abstract idea? What would a patentable process look like that fails the "machine-ortransformation" test? The Supreme Court and otiier courts have never definitively explained what an "abstract idea" is or why it should be an exception to patent-eligible subject matter, although they often conclude that inventions are unpatentable because they constitute abstract ideas. Frequendy, including in Bilski, courts confuse the subject matter eligibility analysis of 35 U.S.C. § 101 with the novelty analysis of 35 U.S.C. § 102. 12 The Bilski analysis merely compares the invention at issue with other inventions in precedent, such as those in Benson, Flook, and Diehr}3 This analysis can easily be manipulated by patent applicants, examiners, and judges to conform to their preconceived notions of whether an invention is patentable. Thus, the resultant test for the patentability of subject matter, particularly where processes are involved, is no better than a "you know it when you see it" test. To resolve at least some of these problems, courts and patent practitioners should not look at "abstract idea" as a judicially imposed exception to eligible subject matter under § 101; rather, the concept of "abstract idea" should be seen as a tool the courts use to apply the statutory text to a process claim. In simple terms, "abstract idea" should not be considered an exception to the text of § 101, but a result of die text of § 101. Analyzing "abstract idea" as a tool for interpreting the text of § 101, rather than an exception to it, would answer questions left by years of precedent, add strength and understanding to the Court's conclusory holdings that certain inventions are merely abstract ideas, provide clarity to a difficult legal analysis, and supply guidance to patent applicants who are considering the patentability of inventions. This Comment analyzes the historical origins and modern interpretation of eligible subject matter under § 101 and the socalled "abstract idea" exception. Concerns with the current understanding of eligible subject matter and its exceptions are addressed. …