SO WHAT CAN YOU GET A PATENT ON?
Intellectual Property Section
Chairs: Ryan Corbett - Burr & Forman LLP and Patrick Reid - Burr & Forman LLP
If the question of
patent eligibility
doesn’t sound so
simple anymore,
T
he patent statutes say
that “any new and
useful process, machine,
manufacture, or
composition of matter, or any
new useful improvement thereof ”
may be patented. 1 Sounds simple
enough, right? Most would agree
that laws of nature, such as gravity,
cannot be patented. But what about
the discovery that a mutation of a
particular gene indicates a greater
chance of developing certain types
of cancer? Or a diagnostic test that
checks whether a patient has that
particular gene mutation? What
about processes, such as financial
transactions, that have been done
manually for generations, but are
now performed using computers?
If the question of patent eligibility
doesn’t sound so simple anymore,
you’re not alone.
For the last 20 years, courts have
struggled with this question. In
1998, the Court of Appeals for the
Federal Circuit effectively decided
that business methods and software
are patent-eligible if they involve
some practical application. 2 That
decision opened the flood gates
for the next ten years, as the U.S.
Patent & Trademark Office began
issuing software and business
method patents at an incredible
rate. Then in 2008, the Federal
you’re not alone.
Circuit and the Supreme Court
began reigning in these types of
patents. 3 In subsequent cases, the
Supreme Court has articulated a
two-part test that considers whether
the invention is “directed to” an
abstract idea, and if so, whether
the invention includes an “inventive
concept” beyond the abstract idea
itself. 4 This test, which blends the
seemingly separate questions of
eligibility and novelty, has led to
strong disagreements among the
lower courts and invalidated patents
on inventions that would have been
deemed eligible a decade ago.
For example, in October 2019, a
divided Federal Circuit panel found
that a method of manufacturing
automobile driveshafts in a way
that reduces vibration is not
patent-eligible. 5 In July 2019, the
full Federal Circuit declined, by a
7-5 vote, to review a panel decision
finding that a diagnostic test for
an autoimmune disease is not
patent-eligible. 6 The Federal
Circuit judges wrote eight separate
opinions, largely agreeing that
the diagnostic test should be
patent-eligible, but disagreeing
over whether Supreme Court
precedent allows it to be patented.
Several judges explicitly called for
the Supreme Court to clarify the
patent-eligibility standard, while
others called for a legislative
solution. And Congress has taken
notice — Senators Thom Tillis
and Chris Coons have drafted
a bill to address patent-eligibility,
an issue the senators called “both
urgent and critical.” In addition,
multiple patent eligibility decisions
have been appealed to the
Supreme Court, giving the Court
opportunities to clarify the issue.
While it is unclear what will happen
in Congress or at the Supreme
Court, what is clear is that the
current state of the law on patent
eligibility is not sustainable. n
1
2
35 U.S.C. 101.
See State Street Bank and Trust Co.
v. Signature Financial Group, Inc. , 149
F.3d 1368 (Fed. Cir. 1998).
3 See e.g., In re Bilski , 545 F.3d 943
(Fed. Cir. 2008).
4 See Alice Corp. v. CLS Bank Int’l ,
573 U.S. 208 (2014).
5
See Am. Axle & Mfg., Inc. v.
Neapco Holdings LLC , 939 F.3d 1355
(Fed. Cir. 2019).
6
See Athena Diagnostics, Inc. v.
Mayo Collaborative Servs. , 927 F.3d
1333 (Fed. Cir. 2019).
Author: Ryan M. Corbett - Burr &
Forman LLP
Join the iP SeCtion through your online MeMber Profile.
50
JAN - FEB 2020
|
HCBA LAWYER