SJ Quinney College of Law, University of Utah

Utah OnLaw: The Utah Law Review Online Supplement


Since the birth of the abstract ideas concept, the judiciary has struggled to define abstract idea and analyze what is patentable under this exception to Section 101. The Supreme Court’s decision in Alice has not clarified the complexities that have arisen from the abstract ideas category. Instead, it falls in line with the warnings of the dissent in Flook, where Justice Stewart advises against the majority’s use of “inventive application” because it conflates the Section 101 and Section 103 inquiries. In order to avoid such conflation, the Alice framework cannot be adopted. Step one of the framework should be eliminated because all inventions embody patent ineligible matter at some level, and it is too difficult to identify an abstract idea without a definitional or categorical understanding of what an abstract idea is. Step two of the framework must be reworked to prevent the courts from adopting an obviousness analysis under Section 101. Rather than using the “inventive concept” language, the Court should address step two as a question of preemption, asking whether the claims in the patent are overly broad and prevent other inventors from building upon the underlying principle. If this suggestion is not possible, the Court should create a bright line rule, at a minimum, to prevent the statutory constraint on the obviousness analysis from being ignored. That is, the courts should not be allowed to break down the claim to determine whether it is conventional. The courts must analyze the claim as a whole to determine if the claim adds enough to transform the underlying idea into a patentable claim.