by Sandra S. Park, Senior Staff Attorney, ACLU Women’s Rights Project
* This post originally appeared at the ACLU's Free Future.
Last April, during the Supreme Court oral arguments in our case challenging patents on human genes, Justice Kagan remarked, “The PTO seems very patent happy.” Her comment, and the unanimous decision invalidating gene patents, clearly expressed the Court’s concern that the Patent Office is overstepping its authority by approving patents that thwart, rather than foster, scientific inquiry and progress.
The Supreme Court will soon re-visit whether the Patent Office has gone too far in granting exclusive rights to what should properly remain in the commons. In the next few months, it will rule in Alice Corp. Pty. Ltd. v. CLS Bank International, a software patent case that completely divided the U.S. Court of Appeals for the Federal Circuit and is sparking controversy in the tech world. Alice follows three recent decisions—with the gene patents case being the last—issued by the Court reaffirming the longstanding principle that the Patent Act does not permit patents on products of nature, laws of nature, and abstract ideas. Patents on abstract ideas are especially likely to raise First Amendment problems, as the First Amendment protects freedom of speech and thought.
The case involves patents on a method for addressing the risk that one party might back out of a deal after the other one has already paid. You can read about the details of the patents here, but the steps of Alice’s patented method essentially call for a third party to keep track of financial transactions between two parties and then to instruct another institution to adjust the two parties’ accounts accordingly at the end of the day. It’s simple enough to imagine carrying out this process using pencil and paper to add up the transactions and a phone to communicate the account adjustment, but Alice’s patents claim any computer implementation of this process. That means Alice has a monopoly on any software or hardware that performs this way of using a third party to address settlement risk, even when Alice has not created the programming code or designed the computer that has this capability.
Yesterday, a unanimous Supreme Court strongly reaffirmed a principle that has existed in our case law for over 150 years: laws of nature, natural phenomena and abstract ideas cannot be patented. This principle may seem obvious, but companies have sidestepped it for years by cleverly drafting applications that pass muster with the patent office.
The decision in Mayo Collaborative Services v. Prometheus Labs. involved patents on methods of correlating blood test results and drug toxicity. The Court found them invalid because the patents do nothing more than claim a law of nature -- how a patient reacts to a drug.
The ACLU filed an amicus brief in the case, arguing that these patents improperly prevent physicians from considering whether to change a patient’s treatment in light of blood test results and therefore violate patent law and the First Amendment, which protects scientific thought. Prometheus’ monopoly allowed it to sue when Mayo wanted to develop and use its own test for determining whether a patient was responding well to a drug.