I'm Matt Rizzolo, a partner in Ropes & Gray's intellectual property litigation group, based in our Washington, D.C. office. In this video, I'll be discussing a topic that has frustrated patent owners, accused infringers, judges and lawmakers alike over the past several years—the ongoing confusion over what constitutes patentable subject matter—that is, what sorts of things an inventor can get a patent on.
Section 101 of the Patent Act
Section 101 of the Patent Act provides that "whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof," may obtain a patent on it, subject to meeting other statutory requirements. Historically, Section 101 was referred to as a "coarse filter" – courts found that the only types of claims prohibited by Section 101 were those directed to abstract ideas, natural phenomena or laws of nature.
Two-part test to assess patent eligibility
In a series of cases from 2010-2014, the Supreme Court developed a two-part test for analyzing whether a claim passes Section 101 scrutiny:
- Part one: The court must determine whether the patent claims are directed to an abstract idea, a law of nature or a natural phenomenon. If they aren't, then the claims are patent-eligible under Section 101. But if they are directed to one of these so-called judicial exceptions, the court must move on to the second part of the test.
- Part two: If the claims are directed to an abstract idea or natural law, the court must then determine whether the claim recites additional elements that amount to "significantly more" than the judicial exception. Simply adding "well-understood, routine or conventional activities" to an abstract idea is not enough.
Confusion over what constitutes patentable subject matter
Over the last decade, courts and litigants alike have struggled to define what exactly constitutes an "abstract" idea, or when a patent claim is improperly directed to one – let alone what activities add "significantly more" to an abstract idea in order to make it patentable. As a result, patents covering things as varied as charging stations for electric vehicles, magnetic resonance imaging machines, methods for diagnosing diseases and even methods for manufacturing the shaft assembly of an automobile all have been found to be unpatentable under Section 101. While this has been good for the patent infringement defendants who successfully raised these defenses, others claim that the broad application of Section 101 across a variety of industries threatens to harm innovation. Many patent attorneys, and even former federal judges, have commented that it's extremely difficult to advise clients whether a patent will be found patentable or unpatentable under Section 101. Often a decision on Section 101 comes down to an attempt to analogize the patent at issue to a case or a patent that has previously been decided by the Supreme Court or the Federal Circuit.
Efforts to clarify patentable subject matter
This past year, a bipartisan group of Congressional representatives held a number of meetings with stakeholders from the tech and biopharma industries, and floated draft language for an amended Section 101. They even went so far as to hold several days of hearings featuring 45 witnesses from a variety of industries, as well as the legal community and academia. But several months have passed, and no official bill has been introduced. Now that we are in an election year, progress from Congress seems unlikely on this issue. At the same time, litigants—as well as the many judges across the lower courts—have repeatedly asked the Supreme Court to clarify its jurisprudence and bring some needed certainty to this area of the law. Even the U.S. Solicitor General strongly urged the Supreme Court to take up the issue in a recent case involving methods for diagnosing neurological disorders. But in January, the Supreme Court denied certiorari in that case and a number of others involving Section 101 issues, signaling that it too is disinterested in wading into the fray at this time.
Looking aheadFor time being, uncertainty regarding patentable subject matter is the status quo. Companies which may be impacted—particularly those in the important and growing industries, such as internet of things, artificial intelligence and medical diagnostics—should be certain to retain counsel experienced in Section 101 issues, and keep an eye out for potential legislative changes.
Article orignally published on 30 March 2020
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