Eppenauer Explores Patent Subject Matter Eligibility in Patently-O Post

Shook, Hardy & Bacon Seattle Managing Partner Bart Eppenauer analyzes a number of recent cases before the U.S. Supreme Court and Federal Circuit involving patent eligibility standards in his April 21 Patently-O blog post, “Section 101—Pivotal Moment for Clarity on Patent Subject Matter Eligibility."

He notes, “Given the high invalidation rate of patents on Section 101 grounds at the Supreme Court, Federal Circuit, U.S. District Courts, and the Patent Trial and Appeal Board (PTAB), interested stakeholders have justifiable concerns on the future value of patents involving software and life sciences, and the fallout this could have on American investment in these crucial industries.”

Several ongoing cases involving patent eligibility could force the Supreme Court to reevaluate the boundaries of Section 101. In his article, Eppenauer discusses Intellectual Ventures v. Symantec, Thales Visionix v. USA and hones in on Sequenom, Inc. v. Ariosa Diagnostics, Inc., which allows the Court to “determine whether a novel method is patent eligible when it involves the research and discovery of naturally occurring phenomenon.”

Weighing in on the Sequenom case, federal circuit Judge Dyk expresses that “a too restrictive test for patent eligibility under 35 U.S.C. Section 101 with respect to laws of nature (reflected in some of the language in Mayo) may discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena.”

Eppenauer concludes, “We are at a critical juncture on defining the proper scope and application of Section 101. Unless the judiciary delineates a clearer framework for enabling meaningful patent protection in areas like biotech and software where America has been a technology leader, the U.S. could rapidly lose its competitive edge in these vital industries.”