Last month, the Federal Circuit issued its latest decision on the issue of patent eligible subject matter. The decision in that case,Ultramercial, Inc. v. Hulu, LLC, was far from earth shattering. With scant analysis, the court found that the subject matter at issue was not patent eligible. But the concurrence authored by Judge Haldane Robert Mayer introduced a possible new test for determining subject matter eligibility that may be coming from the Federal Circuit.

(For a full analysis of the Ultramercial decision — and how other courts have swung on the patent eligibility question since the U.S. Supreme Court’s June 2014 decision in Alice v. CLS Bank — check out my recent article for Bloomberg BNA’s Patent Trademark & Copyright Journal: “Patent Landscape Post-Alice: Not Much Clearer, but Trends Worth Nothing.”)

Judge Mayer begins his concurrence with a relatively non-controversial analysis of why a determination of subject matter eligibility should be a threshold determination and how this determination should involve no presumption of eligibility for issued patents. This analysis is thorough, thoughtful, and without much controversy.

But then, Mayer turns his sights to the determination of eligibility itself. Here, Mayer first notes that the U.S. Supreme Court in Bilski specifically called for the Federal Circuit to delineate patent ineligible business methods from those that involved patent eligible subject matter. Specifically, the Supreme Court called on the Federal Circuit to “fashion a rule defining a narrower category of patent-ineligible claims directed to methods of conducting business.” Mayer then proposes to fill this category of patent-ineligible subject matter with inventions that are merely, as he terms them, “entrepreneurial” rather than technical in nature.

According to Mayer, with Alice, the Supreme Court established a “technological arts test for patent eligibility.” To satisfy this test, Mayer argues that “claims must harness natural laws and scientific principles — those ‘truth[s] about the natural world that ha[ve] always existed’ and use them to solve seemingly intractable problems.” Claims must do more than merely describe a technological objective, but must “set out a precise set of instructions for achieving it.” Mayer’s test would make ideas impermissibly abstract if they were “inchoate — unbounded and still at a nascent stage of development.” These ideas could only escape the realm of the abstract through what he terms “concrete application.” Thus, by “tying it down” through the implementation of scientific principles in a “precisely defined manner,” the abstract could become patentable. Mayer, concerned with too broad of protection for concepts that were not fully developed, felt that through such precise instructions for implementing an idea, the patent’s reach would be confined. This, according to Mayer would ensure that “the scope of the claims is commensurate with their technological disclosure.”

To those who would argue that such an analysis would subsume Section 101 of the Patent Act within the non-obviousness and written description requirements of Sections 103 and 112 respectively, Mayer has a response. He argues that the requirements of Sections 103 and 112 alone have proved ineffective at preventing the “deluge of very poor quality patents” we see today. Instead, Mayer argues that by asking the question: “How much future innovation is foreclosed relative to the contribution of the inventor?” the proper patent scope can be delineated. Because, as Mayer reads Alice, the technological arts test of Alice is, at its core, an effort to prevent claims that are “overly broad” in proportion to the technological dividends they yield.

While it remains to be seen whether any of the other Federal Circuit judges approve of Judge Mayer’s test, it is worth noting that the Federal Circuit does appear to want more concrete guidance on the subject of subject matter eligibility.