Patent eligibility

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Since the Alice v. CLS Bank and Mayo v. Prometheus decisions, district courts and the Court of Appeals for the Federal Circuit has struggled to determine and navigate the boundary between what is and what is not patent-eligible subject matter. The result has been a tangle of intertwined decisions that create an extremely wide and fuzzy boundary. Attorneys are often left to throw up their hands when asked whether a new invention is patentable or whether an existing patent will likely withstand a patent eligibility challenge under 35 U.S.C. § 101. Some would argue that Federal Circuit decisions are currently dependent on which panel of judges hear the case because the present law is so ambiguous and subject to different interpretations. Therefore, the legal community, inventors, investors, corporations, and the public would greatly benefit from the U.S. Supreme Court’s guidance on this issue.
Continue Reading Will the Supreme Court Unravel the Patent-Eligibility Tangle?

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which involve the limits on patent eligibility under 35 U.S.C. § 101.   For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” The Supreme Court further recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.

To determine whether claims are patent-eligible the Supreme Court set forth a two-part test in Mayo as further explained in Alice. This test consists of the following steps:Continue Reading USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law