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Overview of New Developments in Patentable Subject Matter

Judith Kaul  /  Tuesday, August 21, 2018  /  Categories: Just in Case, Patent Law Update  /  Rate this article:
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When considering new developments and case law in Patent Law, one of the most commonly debated issues is that of patentable subject matter. To be granted patent rights,an invention must be judged to satisfy these requirements: 

1. It must demonstrate utility. 
2. It must be novel.
3. It must be nonobvious.
4. It must must be proven to be patentable subject matter or statutory subject matter.

Since the 1970s this fourth factor has been increasingly challenged in the courts.  Commencing with Gottschalk v. Benson, 409 U.S. 63 (1972), until the present, through the U.S. Patent and Trademark Office (USPTO) and the district courts, the Federal Circuit Court and the Supreme Court, the questions related to eligible subject matter frequently arise.  

Simply stated, Gottschalk dealt with whether an algorithm can be considered patentable subject matter as delineated in § 101 of the Patent Act of 1952. It couldn’t in 1972, and it most likely would still not satisfy the and the current patent law act, the America Invents Act (AIA) of 2011. However, interpretation of the AIA to gives one the sense that the USPTO or the courts are broadening their interpretation of eligibility when abstract ideas are combined with a mult-part framework that includes machines or computers.

In Gottschalk, in1972, the Supreme Court held that an abstract the idea like an algorithm could not be judged to be patentable. Besides mathematical ideas, other ideas, particularly business method concepts, began to challenge the definition of patentable subject matter. Typically, the issues included business methods or algorithms and for the most part are rejected for those reasons.  But in 2012, in Mayo Collaborative Services v. Prometheus, Laboratories, Inc., 566 U.S. 66, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012), changed the landscape when the Supreme Court accepted a business method claim that distinguished itself from other statutory subject matter claims.  Mayo set itself apart from other algorithmic claims by using a two-part framework. Thus Mayo distinguished itself from earlier patents that claimed laws of nature, natural phenomena, and abstract ideas through its two-part process combining “an abstract idea of reducing settlement risk by effecting trades through a third-party intermediary,” and then using “a computer to maintain, adjust, and reconcile shadow accounts,” By using the computer to solve complex problems, it converted the claimed abstract idea into a “patent-eligible application.” 

Alice Corp. PLL Ltd. v. CLS Bank Int'l, 573 U.S. ___ , 134 S. Ct. 2347 (2014) citing Mayo, 566 U.S. at 72-73 managed to follow Mayo’s lead. The federal courts have clearly liberalized their interpretations of claims especially when the method combines the abstract concepts or business methods with machines and process frameworks. Do not be fooled. This is not to mislead one into thinking that all abstract ideas or methods just need to  be linked to computers or other machines for a successful patent application.  For further discussion see the resources below.

Secondary Sources

Irah H. Donner, Patent Prosecution: Law, Practice, and Procedure (Bloomberg BNA, 10th ed., 2017).  Print:  Law Library Stacks KF 3120 .D66 2017. Also available through Bloomberg Law.

          -  (Donner’s treatise provides thorough examples of  “Exceptions to Patentable Subject Matter.” See Chapter 6, §§ B – R.).

See also:  Mark A. Lemley, Madeleine, and James Yoon,  "Recent Developments in Patent Law." Updated through 04/17/2017. SSRN.   

A working paper that covers many patent law topics including patentable subject matter.  I used this source to identify recent cases. Several are included here. The survey provides a more in-depth analysis of these patentable subject matter cases than can be provided here.  

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. Nov. 1, 2016). 
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).

BASCOM Glob. Internet Servs., Inc., v. AT&T Mobility LLC, 827 F. 3d 1341 (Fed. Cir. June 27, 2016).  


Leahy-Smith America Invents Act (AIA). 125 Stat. 284 2012.  (P.L. 112-29.) 

Selected Monographs and Multi-Volume Treatises

David S. Chisum, et al., Patents: A Treatise on the Law of Patentability, Validity, and Infringement. (1978-date (Updated 4 Times Annually)).  Lexis Advance. 

Irah H. Donner, Constructing and Deconstructing Patents (2d ed., Dec. 2015). Bloomberg Law. 

Irah H. Donner, Patent Prosecution: Law, Practice, and Procedure (10th ed., 2017). Bloomberg Law.  

Janice M. Mueller, Mueller on Patent Law: Patentability and Validity (2018 – date). WK Cheetah.  CWRU Law Users Only.

Moy’s Walker on Patents (2010 – date (Updated annually)).  Westlaw.  CWRU Law Users Only

John R. Thomas, Patentable Subject Matter Reform (2017).  CRS Report.  

United States Patent and Trademarik Office (USPTO). Manual of Patent Examining Procedure. Section 2105, Patent Eligible Subject Matter – Living Subject Matter [R-08.2017]. (2018). USPTO Manual of Patent Examining Procedure MPEP (See Chapter 2100 Patentability).  Bloomberg Law.  Lexis.  Westlaw. WK Cheetah

Research reminder:

Shepardize, KeyCite and/or B-Cite or use other citator services for all cases you may rely on for papers or notes.

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