Alice's Unintended Social Effect on Employment Commentary
Alice's Unintended Social Effect on Employment
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JURIST Guest Columnist Lawson Huynh from St. John’s University School of Law Class of 2016, is the second author in a twelve-part series from the staffers of the Journal of Civil Rights and Economic Development. Huyhn discusses the impact a recent Supreme Court case might have on patentability of mobile apps and other IT creations …

The world of entrepreneurship offers a detour from conventional employment. Trading in their cubicles for some managerial control, scores of young millennials enter the world of mobile app development. And why not? Millennials are well versed in the value of mobile apps, conversant in social media and understand their millennial consumer base. The allure of entering the mobile apps market increases when you consider the thousands of mobile apps related to health and fitness. And when you consider the benefits of a patented lucrative product, the idea becomes even more irresistible. After all, if Nike can profit from providing fitness advice, so can I. Seems easy, right? Not if a wide-eyed inventor wishes to patent their creation. 


Patents are not granted to anyone for any reason. And this is because patents provide the security of exclusive control over an invention. From an entrepreneur’s perspective, owning a patent means no one can capitalize on your idea without due compensation. It places control in the hands of the entrepreneur promoting entrepreneurship instead of conventional employment. Entrepreneurs can sell their patents to established companies for a sizeable profit. From the company’s perspective, owning more patents means an increased business advantage. 


However there are several requirements for obtaining a patent. The patent must pass several requirements under the Patent Act (“the Act”), 35. U.S.C. §101. Among other requirements, patents must first pass subject matter eligibility. The US Supreme Court has determined that certain subject matter is not patent eligible: laws of nature, physical phenomena and abstract ideas. 


Recently the court in Alice Corp. Pty. Ltd. v. CLS Bank Intern raised the requirements for patentability. There the court invalidated a patent that informed financial professionals how to reduce the risks associated with settlements. The court reasoned that the concept of risk reduction is a well-understood concept in the financial industry. Accordingly under Alice, if an invention implicates a concept or method that is already customary to a particular industry, it cannot be patented.This means trouble for millennials who seek to patent their health and fitness mobile apps because those apps undoubtedly involve some area of dieting or exercise that is already common practice among fitness professionals. On a larger scale, Alice threatens the incentive for entering the entrepreneurial market. 


Alice is as broad as it is troubling because of its impact on health and fitness mobile apps. Health and fitness mobile apps require users to input some degree of personalized information so that the app can provide customized workouts or meal plans unique to the user’s fitness goals. However customized the workout or diet plan, the app will nevertheless involve general well-understood fitness practices. In fact most health and fitness apps will invariably involve some degree of an already well-known practice. Does this mean all patents that involve a well-known practice are automatically invalidated? Would this deter millennials from entering the entrepreneurial world of mobile apps development? 


All is not lost. Alice also informs us that patents that involve an abstract idea may nevertheless be patentable in certain circumstances. If the application of the “abstract idea” is to a “new and useful end,” the patent may survive subject matter patentability. Alice states that the application of the abstract idea must “do more” than simply restate or define the abstract idea. And just when it seems as if the court is offering some meaningful guidance, it decides to stop short of a full explanation. Alice suggests that “doing more” with an abstract idea may help pass patentability, but exactly how much more is uncertain. 


In Alice the court criticized the use of the algorithm and computer as an intermediary because it failed to “transform the nature of the claim” into a patent eligible application. The method patent’s use of a computer as an intermediary was no different from the current practice of using clearinghouses. The use of the computer was “[p]urely convention[al]” because obtaining account data, adjusting account balances, and facilitating with other computers to execute transfers were all “well-understood, routine conventional activit[ies].” 


Under Alice patents on health and fitness apps likely amount to a patent on an “abstract idea.” By nature health and fitness apps counsel users on ways to efficiently diet, and meet their fitness goals. This is largely the same if not an identical, function as a personal trainer or other fitness professional. For example dieting involves the widely understood process of decreasing intake of carbohydrates and increasing intake of protein or some variation of the two. In any circumstance the app will undoubtedly rely on “well-understood, routine conventional [dieting or exercise] activit[ies]” in the fitness community. Health and fitness apps may involve the use of an algorithm or computer to make personalized computations based on the individual’s data. However “obtaining” user information, “adjusting” for user preferences and “facilitating” a customized diet or exercise plan are all “well-understood, routine conventional activit[ies]” already performed by fitness professionals. 


To improve prospects of patentability, patent applicants should consider the following options. Applicants should specify how the invention does more than patent an abstract idea. One way would be by describing the various ways the invention takes the abstract idea and uses it in new and innovative ways that would not otherwise be used. If the patent involves the use of an algorithm, applicants should also describe how the invention falls apart without the proprietary algorithm. Fully explaining how the invention’s proprietary algorithm impacts the uniqueness of the invention may improve the invention’s patentability. 


Though not readily apparent, intellectual property laws can further social goals. While cases are decided on the legal battleground, their implications may affect the social fabric of our society. Legally Alice raises the bar for patenting health and fitness mobile apps. But perhaps more important, socially, Alice lowers the appeal of entering the health and fitness mobile apps community. Echoing parental wisdom, Alice encourages young millennials to “do more.” But exactly how much more remains unclear. And until clarity is provided, Alice may unintentionally dissuade millennials from the world of entrepreneurship.

Lawson Huyhn is a fourth-year evening law student at St. John’s University School of Law. Lawson currently serves as the Managing Director of the Moot Court Honor Society.

Suggested citation: Lawson Huynh, Alice‘s Unintended Social Effect on Employment, JURIST – Student Commentary, Oct. 7, 2015, http://jurist.org/student/2015/10/lawson-huynh-alices-uninteded-effect.php


This article was prepared for publication by Elizabeth Dennis, an Assistant Editor for JURIST Commentary. Please direct any questions or comments to her at commentary@jurist.org


Opinions expressed in JURIST Commentary are the sole responsibility of the author and do not necessarily reflect the views of JURIST's editors, staff, donors or the University of Pittsburgh.