Alice and ‘something more’: the drift towards European patent jurisprudence

On the face of it, the doctrinal lines of disagreement around ‘subject matter eligibility’ in US law and ‘the invention requirement’, as it is known in Europe, could not be further apart. The US statute is silent as to what does not constitute patentable subject matter, while the European Patent Convention (EPC) takes a much more formal approach. Unpatentable subject matter is listed, categorized either as things not to be regarded as inventions under Article 52(2);¹ or as exceptions to patentability under a small number of umbrella contexts.² Professor Burk's incisive analysis of the two-pronged test of subject matter eligibility in Alice³ and its place within recent decisions by the SC⁴ is monitory in three particular aspects of direct relevance to the many decisions of the European Patent Office (EPO) on the ‘invention’ requirement. First, the use and development of a common denominator across excluded categories. Second, the seeping of patentability criteria into eligibility. Third, the nascent focus on the language of the claims that so far the US Supreme Court has declaimed. I will address each of these points in turn, comparing the direction of legal ideas around patent eligibility in both systems of law, before drawing conclusions.