Legislators Propose Patent Eligibility Overhaul

By Zachary G. Schroeder,* Jacob C. Jones, and David G. Barker In April, we posted an article titled “Section 101 in 2019” summarizing the existing patent eligibility test, discussing recent Federal Circuit decisions, and providing practical strategies for practitioners to navigate the Section 101 landscape. That article highlighted the lack of certainty and predictability under existing law. Bipartisan lawmakers recently released a draft revision to Section 101 abrogating U.S. Supreme Court precedent that has denied patent eligibility where the claimed invention is directed to an abstract idea, law of nature, or natural phenomenon. The bipartisan, bicameral draft bill was created following   Read More »

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Section 101 in 2019

Snell & Wilmer Lawyers presented their article, Section 101 in 2019, at the ABA Section of Intellectual Property Law’s Annual Meeting in Arlington, Virginia, as part of a program, “101 ‘301’: Advanced Subject Matter Eligibility.”  The article summarizes the existing patent eligibility test, discusses recent Federal Circuit decisions, and provides practical strategies for practitioners navigating the Section 101 landscape.

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Supreme Court: Mere Computer Implementation Does Not Make an Abstract Idea Patentable

Today, the Supreme Court in Alice Corp. v. CLS Bank unanimously held that all of Alice’s asserted claims were drawn to patent-ineligible abstract ideas.  The Court reaffirmed the framework established in Mayo v. Prometheus for determining whether a claim contains one of the implicit exceptions to patent-eligible subject matter:  laws of nature, natural phenomena, and abstract ideas. Under Mayo, the Court must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.”  If the claim contains a patent-ineligible concept, then the court must determine whether the additional elements “transform the nature of the claim” into   Read More »

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Much Anticipated Federal Circuit En Banc Decision on Patentable Subject Matter Leaves Many Questions Unresolved

Anyone hoping for clarity on the standard for patent “eligibility” under 35 U.S.C. § 101 will be disappointed by the Federal Circuit’s recent en banc decision in CLS Bank International v. Alice Corporation (No. 2011-1301, decided May 10, 2013).  In a one-paragraph per curiam opinion, the court affirmed the district court’s holding that Alice’s patent claims are “not directed to eligible subject matter” under § 101 and are therefore not patentable.  Six separate opinions followed, none of which garnered a majority.  Alice owns four patents directed to a computerized trading platform used for conducting financial transactions in which a third party settles   Read More »

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UPDATE: Supreme Court Revisits Patentable Subject Matter in Mayo Collaborative Services v. Prometheus Laboratories, Inc.

The Supreme Court has addressed the first question of patentability – whether the invention falls within the scope of patentable subject matter – for the second time in three years with its opinion in Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012). Through unanimous decision, the Supreme Court has provided further guidance concerning the scope of patentable subject matter with respect to claims which cover the application of natural laws.  While laws of nature, natural phenomena, and abstract ideas are not patentable under 35 U.S.C. §101, an application of a law of nature to a   Read More »

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