The United States Court of Appeals for the Federal Circuit [hereinafter the ‘Federal Circuit’] has invalidated a significant number of patents and patent applications based upon patent ineligible subject matter. Most of these decisions address computer related subject matter, while the numerically less but equally important biomedical patents, are guided by the same criteria from the United States Supreme Court [hereinafter ‘the Court’]. Many of these patents and patent applications from 2020 through 2021 were originally filed on or about the time that the Court modified patentable subject matter eligibility law. As a result, the day of reckoning has arrived in the Federal Circuit for those who are vulnerable under the modified law.
The good news is that there are definitely foreseeable patterns with computer related inventions:
- Inventions exclusively comprising an abstract idea implemented by conventional and/or
computer components are clearly and unequivocally never patent eligible subject matter.
These inventions will never be protected by patents despite any drafting efforts.
Fortunately, these situations are easily recognized even during initial client meetings,
and this subject matter appears at a practitioner’s office relatively often.
- In contrast, claims designating improvements to the actual computers, computer network, computer components or other mechanic devices could be patent eligible. Whether the patent or patent application survives the test depends in large part how the application was drafted and especially the claim sentences.
- If a claim sentence designates an industrial, laboratory, or other technical process in which the invention improvement comprises an additional computerized step, then the process could be patent eligible.Again surviving a patent eligibility challenge depends upon how the application specification, and to a greater extent how the claim sentences, are drafted.
When drafting practitioners should consider at least the following:
- Does the application drafter hold at least one degree in a computer-related science or technology?
- Does a claim encompass a functional or overbroad result and thereby comprise pre-emption of an entire technology?
Practitioners should review their drafting techniques to avoid applications which will not survive a section 101 challenge, and even if this challenge occurs many years later. Unfortunately, the Federal Circuit has not yet clarified how a specification may support claim designations. Nevertheless, based upon the above pattern the practitioner may accurately predict which inventions may be patentable and immediately advise his clients accordingly.
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 See 35 U.S.C. section 101 (patent eligible subject matter). Under Alice Corporation Pty. Ltd. v. CLS BankInternational et al., 573 U.S. 208 (2014) and Mayo Collaborative Services et al. v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), the appropriate criteria for determining subject matter ineligibility are: (i) is the claim as a whole directed to an abstract idea and (ii) if so, is there an inventive concept that otherwise transforms this characterization of the claim?
 The Federal Circuit does not follow the 2019 U.S. patent office subject matter eligibility policy.
 See Diamond v. Diehr, 450 U.S. 175 (1981).
 However, these challenges are also occurring during the America Invents Act post issuance proceedings in the U.S. patent office.