Passing PERA Assures Patent Eligibility for All Useful Inventions

Confusion and misunderstanding among some independent inventors might slow or stall progress of the excellent eligibility reform bill recently introduced by Senators Chris Coons (D-DE) and Thom Tillis (R-NC). Titled the Patent Eligibility Restoration Act (PERA), the legislation would overturn Supreme Court and Federal Circuit decisions that scrambled settled law, excluding many worthy classes of inventions, such as medical diagnostic methods and advanced computer applications.

Four years ago, the Senators’ initial reform effort stalled because of internal disagreements among pro-invention stakeholders. This dynamic reappeared with the August announcement by one organization in the independent inventor community, US Inventor, of its opposition to the bill as written.

Arguments that the bill codifies the Supreme Court case law, such as Mayo and Alice, are clearly incorrect. It does the opposite. In fact, it bars all courts from defining categories of eligibility or ineligibility.

These inventors also complain that the bill excludes “wide swaths” of important technology. But any such conclusion depends on a gross misreading of the bill’s operative terms.

PERA Does Not Exclude All AI Inventions

Their claims that it excludes all artificial intelligence inventions are similarly incorrect. The bill clearly includes them. The bill merely excludes bare algorithms unattached to computers or other devices. But they were never eligible under the old case law anyway, because they lacked what the U.S. Patent and Trademark Office (USPTO) calls “utility.” Section 101 of the Patent Act, the eligibility section, always requires that claimed inventions be “useful”, which courts have long defined as having specific, present, practical application. How could they do less when the Constitution authorizes patents for the “useful arts?”

In any event, a “bare algorithm”, like a mathematical formula, was never eligible as not amounting to an actual “invention” or protectable “discovery.” Therefore, there is no need to restore eligibility.

To be eligible, a “process”, the word in section 101—that is, a method of doing something—cannot include those that speculatively might someday find a practical use, but which cannot be described today. The practical use must be known and discernable from reading the patent.

The Bill Draws a Sensible Line on Business Method Patents

Another criticism concerns so-called “methods of doing business,” a hopelessly ambiguous category. The bill does not exclude all of what might be considered business methods. But neither does it include them all. Instead, it draws a sensible and enforceable line, as follows: If a particular business method depends for its practical implementation on a computer or other device, it is eligible. If, however, as a practical matter it can be implemented solely in the human mind or by a person using only pencil and paper, or otherwise unaided by tangible technology, it is not.

If the complaining inventors want pure algorithms and mathematical formulas to be eligible, that is precluded by sound precedents of long and settled lineage. The primary reason is they inherently lack specific, present, practical uses. Accordingly, Congress certainly will not, nor should it try to alter that rule. Moreover, these inventors have not defined specific algorithms or other creations they consider properly eligible under historic understandings of patent law but that would be excluded under the language of the bill. I suggest that is because they cannot.

Future Inventions are Not Under Threat

Yet another complaint they voice is that since all technologies that may be created in the future cannot be predicted today, the bill will block eligibility for them. Again, not so. Provided that the particular new technology meets the test of utility and requires a “machine” or “manufacture”, explicit categories long contained in Section 101 for practical implementation, courts cannot declare it ineligible.

In fact, the bill expressly bars courts from defining excluded categories and itself defines the only exclusions permitted in narrowly circumscribed and clear categories. It also prohibits conflating eligibility and patentability criteria, as the courts have been doing. This ban will end the confusion and unpredictability as well as the undue exclusions the courts imposed.

Killing the Bill Will Hurt Us All

Finally, some inventors complain that practicality is too uncertain a test. But experience demonstrates that it is not. For example, methods of quickly calculating and allocating numerous stock account values at the end of the trading day clearly cannot be performed mentally or by a person with only pencil and paper. Obviously, a computer is required. The argument that the patent would have to contain precise time limits, such as “within 1 millisecond” is fanciful, if not silly.

Similarly, they complain that the word “substantially” is not defined. But courts have long applied this concept to prevent gamesmanship by adding words that are just cosmetic.

It should also be noted that the bare algorithms these critics seem to want would not only be bad policy, but politically impossible. If the Coons/Tillis reform bill stalls because of their unfounded and unreasonable opposition, there will be no legislation at all.

That outcome would not only be terrible for economic growth and national security, but also harmful to all inventors, including those who belong to US Inventor. I can only hope they will reconsider their stated opposition.

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Copyright: stuartmiles