Patent Eligible Inventions
- United States
- 08/28/2012
Software development, genetics and methods of doing business are three areas undergoing unprecedented innovation, but questions have been raised about the patent eligibility of claims drawn to these inventions. Recently, the Supreme Court of the United States has made clear that 35 U.S.C. §101 provides a threshold for patent eligibility if claims are drawn to laws of nature, physical phenomena or abstract ideas.1 Other claims are deemed patent eligible, such as claims that transform matter. 2 Financial methods and tax strategies have not fared well before the highest court. A “process is not unpatentable simply because it contains a law of nature or a mathematical algorithm,” and “an application of a law of nature or a mathematical formula to a known structure or process may well be deserving of patent protection.” 3 However, an otherwise ineligible process does not become patent eligible merely by adding the word “applied” to the claim.1 Patent attorney claim drafting tricks have been dismissed as a way of turning what would otherwise be ineligible subject matter into a claim eligible for patent protection.
So what is patent eligible and what is not? The Supreme Court has not answered this question, and there is no bright line rule or test. Instead, recent decisions that have considered this question are the only road map for patent attorneys and their clients. The Court of Appeals for the Federal Circuit is faced with difficult legal and policy decisions when addressing patent ineligibility. Must the claims be construed (i.e. interpreted) by the Court prior to determining patent eligibility? What types of claims are subject to patent ineligibility, just method claims or other types of claims, also? What do claims that contain laws of nature, mathematical formulas or physical phenomena need to include in order to be patent eligible?
In Bancorp Services, L.L.C. v. Sun Life Assurance Co of Canada (U.S.), decided by the Court of Appeals for the Federal Circuit on July 26, 2012, the appellate court decided “…that claim construction is not an inviolable prerequisite to a validity determination under § 101…, however, that it will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.” However, the appellate court chose to construe the claims in the first instance, because claim construction is a matter of law, reviewed de novo by the appellate court.
What types of claims are subject to patent ineligibility? In Bancorp, the appellate court considered claims including both methods and computer-readable media and held that “…a machine, system, medium, or the like may in some cases be equivalent to an abstract mental process for purposes of patent ineligibility…,” and “…form of the claims should not trump basic issues of patentability,” referencing the Supreme Court’s decision in Flook, 437 U.S. at 593 (advising against a rigid reading of § 101 that “would make the determination of patentable subject matter depend simply on the draftsman’s art”), Mayo, 132 S. Ct. at 1294, and its own decisions in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011) and CLS Bank International v. Alice Corp., No. 2011-1301, 2012 WL 2708400, at *10 (Fed. Cir. July 9, 2012).
What do claims that contain laws of nature, mathematical formulas or physical phenomena need to include in order to be patent eligible? Bancorps challenged claims amounted to no more than abstract ideas. The appellate court stated that to “…salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not,” referencing SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).4 More recently, in a split decision that offers little light on the subject, the Court of Appeals for the Federal Circuit reversed a district court and held that isolated DNA are not patent ineligible. This decision is likely to be reconsidered by an en banc panel or the Supreme Court of the United States or both. This last question is far from being answered in a way that will provide comfort to the patent bar.
For additional information, please contact Christopher Paradies, Ph.D, a Florida Bar Board Certified Lawyer in Intellectual Property.
