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Mainstream Controversy with the New-Enablement feature: Scrutiny of 35 U.S.C § 101 and Case laws

Breakdown of Statutory Patentability Requirements: 35 U.S.C § 101:-

Getting a patent is not a cup of tea, it requires immense effort and investment. The invention must go through stringent examination and tests to demonstrate its originality and usefulness. In each variant of Intellectual Property Rights, whenever a creator is on a mission to invent something to meet specific public demands, he/she must be aware of the criteria for such an invention to get protection. Similarly, Patent law provides certain privileges to the inventor, who creates something new which has usefulness and lacks obviousness. Such a protection of the invention guarantees exclusive marketing rights.
US Patent Law has been in the limelight for a long period of time, because of the controversy related to its Statutory eligibility requirements which are established in 35 U.S.C. § 101. Indian Patent Law prescribes patentability standards in accordance to the definition clause, the manner in which the patentability standards can be derived is in the form of “What are not inventions” under Section 3 of the Indian Patent Act, 1970. Whereas The US Patent Law prescribes patentability standards in a different manner, the US patent law prescribes patentable inventions under § 101 of 35 U.S.C which implies “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, therefore subject to the conditions and requirements of this title.”

The Statute implies four ultimate requisites in § 101:

Firstly, the use of the letter ‘a’ denotes that grant of a patent will take place for one particular invention alone .In other words, it rejects double patenting. Secondly, the term “useful[i]” refers to the utility or the usefulness of the invention. It establishes the fact that an invention must have a precise, significant, and convincing efficacy. Thirdly, the use of the words “Process, Machine, Manufacture, Composition of Matter[ii]” refers to the subject matter for which the patent is sought. Fourthly, the phrase “Whoever invents or discovers[iii]” means that the exclusive right of a patent will subsist on those persons who have participated in the invention. These are the subject matters on which the test of eligibility is conducted.

Analysis of the Jurisprudence and Precedents concerning § 101:-

Parker v. Flook (1978) – A clear application of 35 U.S.C § 101[iv] was displayed by the Supreme Court while giving its decision in the case of Parker v. Flook[v]. This case revolves around a patent claim for a “method of updating alarm limits” of a catalyst converter. The Supreme Court, after relying on several cases, rejected Flook’s claim and reasoned that an invention which along with a mathematical algorithm involves any inventive step that can depart[vi] it from any existing prior art is eligible for getting a patent but a mathematical algorithm in itself will be considered as prior art. The claim is considered as a whole and so, it is not eligible for getting a patent. This judgment explained that an invention or outcome of any research must depict the methodology of such invention which shows that an inventive step is involved in the invention.

Diamond. v. Diehr (1981) –The US Supreme Court made further development in the jurisprudence of patent claims involving mathematical algorithms in the case of Diamond. v. Diehr[vii]. In this case, a patent application was filed[viii] for a process which can be used in molding raw uncured rubber into cured precision products. The Supreme Court while pronouncing its judgment reiterated its earlier holding that a mathematical formula in abstract is not eligible for patent protection but in this claim mathematical algorithm was used in a physical machine or process rather than using it in an abstract way, which makes it eligible for getting a patent. Hence, a patent was granted[ix] in this case. Using a mathematical formula in a physical machine or process instead of using it in an abstract way makes the methodology behind an invention easily comprehendible depicting the inventive step of that invention. 

Mayo–Alice Test– Patent eligibility under 35 U.S.C § 101 has always been a controversial affair due to the application of Mayo-Alice Patent Eligibility test by various district courts. This test involves two steps which include determining whether the claims at issue are directed to one of those patent-ineligible concepts and searching for an “inventive concept”. This test has some major drawbacks[x] which cannot be ignored and these drawbacks increase the burden on the Supreme Court in deciding such cases. Authors have chalked out some drawbacks of this test which are as follows:

· This test provides no objective standard for judging patent eligibility.
· This test fails to define what exactly an “abstract idea” is, which creates confusion for judges who apply this test.
· This test fails to provide any pragmatic guidance for fulfilling patent eligibility.
· This test presents conflicting patent eligibility standards with respect to SC’s precedents like Diamond v. Diehr because in this judgment it was made clear that an invention must depict the methodology and the prior art on which that invention is based but the mayo-Alice test presents the idea[xi] that the analysis and depiction of prior art and methodology is irrelevant.
· This test blends the patent eligibility mentioned in 35 U.S.C § 101 with a vague and non-defined idea of “Inventive Concept”.

Controversy with the ‘new-enablement’ eligibility criteria: Critical Study of AAM vs Neapco:-

Complying with the eligibility criteria is the prima facie requirement to acquire a patent. Such eligibility criteria, that is established in 35 U.S.C § 101, has been a matter of controversy for a very long time. Furthering such controversy, a recent case named American Axle & Manufacturing, Inc. v. Neapco Holdings LLC[xii] created confusion by misinterpreting US Patent Laws. AAM sued Neapco with allegations of Patent infringement which is related to a driveshaft invention, in a District Court of US. The district court ruled in favor of Neapco, so AAM moved to the federal circuit.

The confusion started escalating when the Federal Circuit upheld the decision of the District Court with further modifications. The actual matter of dispute was that the invention or the outcome must carry the methodology of such invention. According to US patent laws, the concept of Enablement lies in Section 112[xiii] of the 35 U.S.C which deals with specifications. Here, the concept of enablement has been confused with the patent eligibility under section 101. Enablement means[xiv] that the person who invents something must prescribe the methodology, so that the person having the required amount of skill and art may be able to accomplish it. This lies in the Specification area and not in the Eligibility ambit. The case revolves around the new enablement feature and whether it must be referred to, in case of eligibility or not. It was pointed out that the main target in the arena of inventions and innovations is to acquire the desired result, whether it is achieved through natural law or not, it does not matter. AAM contented that the enablement must be an eligibility criterion, whereas Neapco states that the failure of input of enablement is not an issue of eligibility[xv], thus it is legitimate.

AAM wants the claim to include the methodology of the invention, regardless of how simple or difficult it might be so that it helps the other practitioners but Neapco wants that the desired result should be the deciding subject matter and not the process. In the patentability of the Driveshaft, the Federal Circuit rejected the significant claims on the ground of ineligibility. This controversial judgment made it clear that even after application of the Mayo Alice test; the mechanical patents are not secured.


In the instant case, AAM failed to read the existing jurisprudence and precedents of this issue meticulously. The authors want to recommend that the inventors should read the existing jurisprudence and precedents in a more careful way to avoid any sort of perplexity regarding their claim as it is a responsibility of an inventor.

The authors support the view that a summary of the methodology should be encrypted with the claim. This step, if taken will provide an economic advantage to the practitioners of that field and will result in increasing the competition and such competition can be the basis of development.

There is a lot of confusion regarding 35 U.S.C § 101 and 35 U.S.C § 112a. Not only the inventors but the judges often get stuck in this quagmire. The government of the USA should make all the reasonable and necessary efforts to end this confusion because such confusion exerts an immense burden on the Judiciary.

The Mayo-Alice test which is contemporarily followed by the courts in the USA to determine the eligibility of a patent claim is out of date and presents a vague idea which creates a sense of perplexity in the minds of Jurists while scrutinizing a case. So, a new and more intelligible test or policy must be rolled out by the American government to end the confusion among the jurists and inventors. That new test must expound the difference between patentability and specification which is the root cause of many controversies. The new test should make sure that every application of the patent must have a creator friendly language which can be easily comprehended for the further use of that patented invention. Additionally, it should mandate including the methodology and description of the prior art in the application.


[i] Statutory Requirements and four categories of Invention, 17 Nov 2020, 3:54 AM, https://www.uspto.gov/sites/default/files/101_step1_refresher.pdf.
[ii] Id.
[iii] Supra at 1.
[iv] 35 U.S.C § 101 (1952).
[v] Parker v. Flook, 437 U.S. 584 (1978).
[vi] Parker v. Flook: Everything you need to know, 17 Nov 2020, 4:04 AM, https://www.upcounsel.com/parker-v-flook.
[vii] Diamond v. Diehr, 450 U.S. 175 (1981)
[viii] Diamond v. Diehr, 17 Nov 2020, 4:10 AM, https://h2o.law.harvard.edu/collages/18995.
[ix] Id.
[x] Eric Guttag, The Broken Patent-Eligibility Test of Alice and Mayo: Why We Urgently Need to Return to Principles of Diehr and Chakrabarty, 17 Nov 2020, https://www.ipwatchdog.com/2014/09/25/broken-patent-eligibility-test-of-alice-and-mayo/id=51370/.
[xi] Flaws in the Supreme Court’s section 101 precedent and available ways to correct them, 17 Nov 2020, 4:22 AM, https://www.ipwatchdog.com/2020/04/27/flaws-supreme-courts-%C2%A7101-precedent/id=121038/.
[xii] American Axle pvt. Ltd v. Neapco holdings. LLC., 17 Nov 2020, 4:33 AM, http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1763.OPINION.7-31-2020_1628791.pdf.
[xiii] 35 U.S.C § 112 (1952).
[xiv] 2164 The Enablement requirement, 17 Nov 2020, 4:36 AM, https://www.uspto.gov/web/offices/pac/mpep/s2164.html#:~:text=1988)%20(%22The%20test%20of,well%20known%20in%20the%20art.
[xv] Still Contentious and “No More” Clear- AAM v. Neapco and its take on Section 101, 17 Nov 2020, 4:40 AM, https://www.lexology.com/library/detail.aspx?g=0cd64bbe-158b-40e0-ab4d-879efda59577#:~:text=(%E2%80%9CAAM%E2%80%9D)%20had%20sued,infringement%20of%20U.S.%20Patent%20No.&text=The%20Federal%20Circuit%20found%20claim,representative%20of%20the%20’911%20patent.

Author: Bhaskar Mukherjee, Amity Law School, Noida & Shaurya Shukla Chanakya National Law University, Patna.

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