Don’t Use a “Technical Arts Test” as a Shortcut for Patent Eligibility Issues Under Alice

I would like to respectfully convey my disappointment with a recent post “The (New) Technological Arts Test in Determining Patent-Eligible Subject Matter.” While reasonable minds are free to disagree, I worry about the harm of placing the so-called “technical arts test” at the forefront of discussions on patent eligibility under 35 U.S.C. § 101.

While I always appreciate further debate and insight into Alice issues with patents, I respectfully disagree that any U.S. court is using a "technical arts test" properly under precedent. Calling the two-part examination detailed in Alice for subject matter eligibility under § 101 a “technical arts test” is a misnomer and may encourage application of Judge Mayer’s proposed test. Simply put, the technical arts test far too broadly applies ineligibility and encourages a “know-it-when-I-see-it” analysis over the full Alice/Mayo examination.

The only "technical arts test" comes from Judge Mayer’s Ultramercial concurrence (Nov. 2014) where he proposes a semi-formed rule that “[i]n effect, Alice articulated a technological arts test for patent eligibility” and that “claims were patent ineligible because they did not ‘improve the functioning of the computer itself’ or ‘effect an improvement in any other technology or technical field.’” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 721 (Fed. Cir. Nov. 14, 2014). We know this is Judge Mayer’s proposal of a new test because he states:

A rule holding that claims are impermissibly abstract if they are directed to an entrepreneurial objective, such as methods for increasing revenue, minimizing economic risk, or structuring commercial transactions, rather than a technological one, would comport with the guidance provided in both Alice and Bilski. Id.(emphasis added).

My secondary concern is that people will accept Judge Mayer’s proposal as a valid interpretation of the Alice inquiry. My primary worry is that using the name “technical arts test” or giving any credence to Judge Mayer’s TAT concept just further muddies the waters for judges, USPTO examiners, and inventors/patent owners. While my patent colleagues may enjoy a brief uptick in business and client questions, transitioning to the shortcut technical arts test would undo any consistency in application that we have come to see in the 20 months since the Alice opinion.

I believe the above-referenced article may bury the lede as the authors appear to recognize very few (if any) courts are calling Alice a technical arts test as of today. Anyone who reads the last paragraph of the article can come to appreciate that only 5 district court cases have cited J. Mayer’s construct (of the hundreds allegedly invokingAlice). I have personally only seen one rejection of a claim under § 101 that adopted a type of TAT—and that was prior to the issuance of the USPTO Guidelines and Update.

Accordingly, I am unaware or anyone in the industry who calls the two-part test in Alicea “technical arts test.” I think that is for good reason, as patent practitioners and patentees prefer to refrain from conflating the distinct steps.

The "technical arts test" is only stated in Judge Mayer’s Ultramercial one-man concurrence. The post states that the Federal Circuit has not expressly adopted J. Mayer’s TAT but leaves too much ambiguity. The CAFC and the Supreme Court, as the article point out, had several opportunities to incorporate and apply the TAT, but chose to not implement it. The Federal Circuit, unlike the other circuit courts, writes opinions to provide uniformity in the lower courts—there has been no panel decision, let alone anen banc opinion, adopting the test. As such, it remains only as a proposal and solely relying on a TAT is not good practice for any patent professional.

Nevertheless, the article gives the impression that the CAFC’s DDR— issued a few weeks after Ultramercial—affirmed the test. I disagree and believe that the patent community settled this question within weeks after issuance of the opinion in December 2014. DDR demonstrated an appeal panel from the Federal Circuit clearly disagreeing with Judge Mayer. Judge Chen, writing for the panel decision, explicitly rejected applying a technical arts test as the TAT applied in the dissent produced the opposite conclusion of the panel majority. As the article describes, DDR found eligible subject matter; however, that analysis was the through step 1 of the Alice/Mayo framework of claims inextricably rooted in a business endeavor. Judge Mayer’s DDR dissent (and Judge Chen having to address it) indicates that the DDR’s invention would have failed his technical arts test. With the majority rejecting J. Mayer’s analysis, it affirmed that the TAT is insufficient for use by the lower courts. Judge Mayer suggesting that the majority misapplied the TAT does not necessitate that J. Chen actually used the TAT and it certainly does not open the door to skipping the full Alice analysis.

To this extent, I believe the importance of the TAT in Alice/101 jurisprudence is overstated in the article. Neglected from the article are the concepts like (i) the generic computer test, (ii) inclusion of routine additional steps usually weigh in favor of ineligibility and (iii) claims that do not preempt every application of an idea tend to be eligible. These are all factors for consideration in Alice scrutiny. There are no bright-line rules for Alice and offering “The (New) Technical Arts Test” is an over-simplification of a tumultuous area of patent law. I believe it’s a dangerous oversimplification that could lend support to anti-patent advocates in software, business methods, and beyond.

And for the record, I think the “technical arts test” would still be superfluous as anything that truly does not “effect an improvement in any other technology or technical field” should be unpatentable under 35 U.S.C. 102 and 103 for being anticipated by or obvious in view of prior art. Again, over-reliance on shortcuts lead to bad law.

Nevertheless, I may have jumped to a conclusion as to the goal of the article. Perhaps I misinterpreted the authors’ intention. If the purpose was to merely warn of the possibility of seeing the TAT at district courts more often, then please forgive my misunderstanding.

However, whenever anyone is discussing the TAT, I would recommend (a) clarifying theAlice test from Judge Mayer’s test and (b) discussing ways to steer judges and examiners away from taking the technical arts test as a shortcut—otherwise we may be seeing it mentioned all too often.

First published as a LinkedIn post, March 2016.

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