In its order list released on January 13, 2020, the Supreme Court denied several petitions to address patent eligibility. Many hoped that the Supreme Court would weigh in on patent eligibility this term to better establish what constitutes patentable subject matter. This subject has been one of the most hotly debated topics in patent law and the law has been in flux for far too long. Unfortunately, the Supreme Court is unlikely to weigh in on patent eligibility this term.
Blessing in disguise?
However, the Supreme Court’s decision to pass on addressing patent eligibility may be a blessing in disguise. Between 2010 and 2014, the Supreme Court addressed patent eligibility in four monumental cases: Bilski v. Kappos, Mayo v. Prometheus , AMP v. Myriad, and Alice v. CLS Bank. These cases turned the patent world on its head. As a result, patentable subject matter became an elusive target.
Current state of patent eligible subject matter
Since then, the U.S. Patent and Trademark Office has struggled to secure a handle on what constitutes patent eligible subject matter. Recently, the U.S. Patent and Trademark Office has taken significant strides to clarify what constitutes patent eligible subject matter and provide some consistency during examination. Unfortunately, the government still a lot of work to do to ensure that applicants are receiving a fair examination.
Options for practitioners
At this time, patent practitioners will have to rely on the U.S. Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). However, the 2019 PEG does not constitute written law and may be subject to future scrutiny by the U.S. Court of Appeals for the Federal Circuit. Only time will tell how patent eligibility will be addressed in the future, but we will remain optimistic until then.
What constitutes patent subject matter can be a difficult question. However, at Smith & Hopen, we have an experienced team of attorneys that can properly advise you on all matters related to patent eligibility.