June 16, 2015 Articles

Defensive Strategies in View of the Changing Patent Eligibility Landscape

Portfolio audits and further prosecution before the USPTO may help patent owners hurdle the higher bar

By Nate Cassell and Jennifer Giordano-Coltart

In the past five years, the patent bar has witnessed a seismic shift in the way the U.S. Supreme Court approaches the issue of patent eligibility under 35 U.S.C. § 101. See Bilski v. Kappos, 561 U.S. 593 (2010); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013); Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). This sea change in patent doctrine surrounding the judicial exceptions (i.e., abstract ideas, natural phenomena, and laws of nature) was perhaps foreshadowed by Justice Breyer's suggestion that a patent claim involving a diagnostic correlation did not meet the requirement for subject matter eligibility because the claim did not add "anything more of significance." Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 137–38 (2006) (Breyer, J., dissenting). This suggestion has expanded to raise questions about the patent eligibility of many technologies.

Raising the Section 101 Bar

Both the U.S. Court of Appeals for the Federal Circuit (CAFC) and the U.S. Patent and Trademark Office (USPTO) have been grappling to understand the scope and depth of the Supreme Court's recent and aggressive foray into section 101 jurisprudence. Unfortunately, these efforts have met with little success. The CAFC has continually been rebuked by the Supreme Court on section 101 issues, and the USPTO has been forced to publish a seemingly never-ending series of updated memoranda and guidelines explaining how patent applications will be examined in view of the section 101 judicial exceptions.

The trajectory of the Supreme Court's activity is clear. Although the section 101 eligibility requirement was until recently understood to be a coarse filter, it has quickly become a higher bar that patentees must clear in order to maintain validity. To date, however, it is not clear just how much higher the Supreme Court intends to raise this bar.

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