Navigating the Patent Eligibility Landscape with Practical Law

November 27, 2017

Inventors and companies seeking to patent their inventions and enforce their patents in court must understand the standards the US Patent and Trademark Office (USPTO) and courts apply in determining whether an invention is patent eligible under Section 101 of the Patent Act (35 U.S.C. § 101). The law on patent subject matter eligibility is evolving, and navigating the issues in this area can be complicated.

Section 101 is drafted broadly, but in interpreting it, the US Supreme Court held that the following are not eligible for patent protection:

  • Laws of nature.
  • Natural phenomena.
  • Abstract ideas.

In two key cases, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014), the Supreme Court established a framework for determining if an invention covers patent-eligible subject matter. Under Alice and Mayo, a court must:

  • Determine if the patent claims are directed to one of the judicial exceptions listed above.
  • If the claims are directed to a judicial exception, determine if the patent claims have additional elements—an inventive concept—so the claims are not merely directed to the judicial exception itself.

If the patent claims do not cover an inventive concept, then they are ineligible for patent protection under Section 101. By contrast, if a patent is not directed to a judicial exception (step 1) or includes an inventive concept (step 2), then the patent satisfies Section 101 and claims patent-eligible subject matter.

The specific analysis courts employ in deciding patent eligibility is usually dependent on the patented technology and accomplished by analogizing to previous decisions by the Supreme Court and US Court of Appeals for the Federal Circuit. Consequently, a full understanding of the case law is essential for:

  • Responding to eligibility rejections during patent prosecution at the USPTO.
  • Making and rebutting eligibility arguments during proceedings before the Patent Trial and Appeal Board (PTAB).
  • Making and responding to ineligibility arguments during patent litigation.

Practical Law’s Intellectual Property & Technology team has created several resources to help inventors, companies, and their counsel navigate the tricky waters of patent eligibility determinations, including:

  • Resources outlining and discussing the core principles and key patent subject matter eligibility cases.
  • A Section 101 case tracker that can be sorted in multiple ways including chronologically, by technology, and by comparable and distinguished cases.
  • Templates for petitions and responses to petitions to institute proceedings before the PTAB on the basis of subject matter eligibility.
  • Sample district court motions to dismiss and for summary judgment on patent subject matter ineligibility grounds.
  • A template for responding to USPTO rejections of patent applications based on patent subject matter eligibility.

These resources are conveniently compiled in the Section 101 Patent Eligibility Toolkit.