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The Inventive Concept: Unclear Judicial Guidance Causes Frustration for Inventors

Published onAug 09, 2022
The Inventive Concept: Unclear Judicial Guidance Causes Frustration for Inventors

What is at the core of invention? All inventions boil down to applying some natural law, but where is the line between natural law and invention? As of now, the Supreme Court’s holding in Mayo Collaborative Servs. v. Prometheus Labs, which addresses this complex question, has proven to still be confusing with no clear resolution in sight. The Court’s denial of opportunities to clarify this issue has caused American inventors to unreasonably weigh the risk of disclosing their inventions against the uncertainty of acquiring a patent.

In 2012, the Supreme Court held in Mayo that to be patentable, “a process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’  sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” The most recent Supreme Court case which granted certiorari with regard to an “inventive concept” is Alice Corp. Pty. Ltd. v. CLS Bank Int’l, decided in 2014. The Court held that a computer applying a “fundamental economic practice” was unpatentable because the invention involved an “abstract concept” akin to natural law. Since then, the Supreme Court has not granted certiorari in any other cases concerning “inventive concept.”

Most recently, in June of this year, the Supreme Court denied certiorari in the case of Am. Axle & Mfg. v. Neapco Holdings LLC. In that case, the Federal Circuit affirmed that American Axle’s patent claim was patent ineligible as it violated 35 U.S.C. § 101 for lacking an inventive concept. American Axle’s patent claimed:

A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:

  • providing a hollow shaft member;

  • tuning a mass and a stiffness of at least one liner, and

  • inserting the at least one liner into the shaft member;

  • wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations.

The issue on appeal was whether “tuning a mass and a stiffness of at least one liner” was unpatentable subject matter. The court held 2-1 for Neapco, holding that the element was unpatentable because it was effectively a recitation of a natural law with no additional inventive concept. The dissent found that the majority had broadened the scope of § 101 as “any claims are now ineligible if their performance would involve application of a natural law.” The case was denied a hearing en banc, with an evenly split 6-6 decision. Despite this split in opinion, and a number of parties filing amicus briefs asking for guidance in wake of this decision, the Supreme Court still refused to hear American Axle’s appeal.

The Federal Circuit is the highest appellate court with jurisdiction to hear patent cases outside of the Supreme Court. Since the Supreme Court doesn’t appear interested in hearing these eligibility cases, the Federal Circuit is effectively deciding what “inventive concept” means as of late. Given the split in American Axle however, it appears that even the Federal Circuit can’t agree on what constitutes an “inventive concept.” This lack of clear direction proves to be a problem for American inventors: why waste time creating inventions if it is unclear you will get a patent?

The purpose of the patent system is to provide economic incentive for inventors to disclose their knowledge to the public sphere. Unclear rules discourage inventors from disclosing their inventions. In fact, by providing an ambiguous rule as to the patentability of inventions, the court in effect forces the inventor to gamble. The inventor must determine whether the risk of disclosing their invention to their competitors outweighs the unclear chance of receiving a patent. The Supreme Court in denying certiorari in American Axle has perpetuated this risk. Clear judicial guidance would help eliminate the need for this kind of gamble by inventors.

Given the lack of guidance by the Supreme Court, the Federal Circuit could potentially progress the law over time, or Congress may generate a legislative solution. However, only one thing is certain right now regarding the Supreme Court’s stance: you better make sure that your invention is “inventive.”

Banks Griffin is a second-year law student at Wake Forest University School of Law. He holds a Bachelor of Science in Electrical Engineering from the University of Virginia. Prior to studying at Wake Forest, he practiced engineering for six years with a focus in electrical controls in a variety of manufacturing sectors. Upon graduation, he intends to practice in the areas of patent prosecution and IP litigation.

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