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The Patent Eligibility Restoration Act and the Implications for Artificial Intelligence Patentability

The Patent Eligibility Restoration Act and the Implications for Artificial Intelligence Patentability

The Patent Eligibility Restoration Act (PERA) is a proposed legislation that aims to address the Supreme Court’s decisions in cases like Alice, Mayo, and Myriad. It seeks to return to the time when the Bilski decision was the law, which many innovators would welcome. However, there are doubts about PERA’s effectiveness in patenting artificial intelligence (AI) inventions.

Since the Alice decision, there has been concern that AI inventions could be deemed patent ineligible due to their abstract nature. AI’s usefulness lies in its ability to process abstract information, which poses challenges when it comes to claiming and protecting these inventions. Traditional positive machine or apparatus claiming may not effectively capture the commercial value of AI.

PERA proposes to eliminate the foundations of the abstract idea analysis established in Alice. This could be a game-changer for AI patentability, as it would remove a significant hurdle that has prevented many AI claims from being granted. However, some critics argue that PERA might go too far and that its enactment as written is unlikely.

One of the key issues in the subject matter eligibility test under Alice is determining whether the claims are directed to a patent-ineligible concept, such as a law of nature, natural phenomenon, or abstract idea. The lack of clarity in defining “directed to” has resulted in subjectivity and inconsistency in determining patent eligibility. Examples like American Axle v. Neapco, where a manufacturing method was deemed directed to a natural law, highlight the problems with this subjective approach.

The Patent Trial and Appeal Board (PTAB) has also exercised discretion in determining what claims are directed to, often resulting in claims being found directed to a mental process or abstract idea, even when they include apparatus or computer program elements.

PERA’s elimination of the current discretionary approach in determining “directed to” could provide much-needed clarity and consistency in AI patentability. However, the extent to which PERA will impact the eligibility of AI inventions remains to be seen.

In conclusion, PERA’s goal is to restore patent eligibility for various inventions, including those related to AI. By addressing the issues raised by the Supreme Court’s decisions in Alice, Mayo, and Myriad, PERA aims to create a more predictable patent system. Its impact on AI patentability could be significant, but the specific implications will depend on how the legislation evolves.

– [Source article]
– [American Axle v. Neapco, case citation]
– [Ex parte PHILIP E. VASEY, appeal decision]

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