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Another Turn in the Path to Patentability

By Stuart Meyer

In the April issue of The Intellectual Property Strategist, we detailed a growing rift in the Federal Circuit regarding the issue of patentable subject matter, and pondered whether the Supreme Court would resolve this issue when it came out with its decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150. We did not have to wait long, as the decision was issued on March 20. The Supreme Court held that a method claim that does nothing more than restate a law of nature and add conventional steps cannot be patentable. At first glance, this may not sound remarkable, but upon closer inspection this holding has the potential to dramatically change patent law for decades to come.

In Bilski, the rejection of the claims at issue was unanimous, but the Court was deeply divided in its reasoning and came within a single vote of categorically eliminating business methods from the scope of patentable subject matter. Bilski v. Kappos, 561 U.S. __, 130 S. Ct. 3218 (2010). In Mayo, the Court spoke with one voice, with no Justice submitting a separate concurring opinion. As we head toward the middle of 2012, we have not only the Mayo and Bilski opinions on patentability, but also recently enacted patent reform hailed as the most significant in 50 years (the America Invents Act or AIA, signed into law in September 2011) as well as numerous guidelines and proposed rules set forth by the U.S. Patent and Trademark Office (“PTO”). Yet even with all three branches of government having spoken directly on the issue, we astonishingly still do not have clear guidance for how to determine whether a method claim is patent-eligible. How is that possible? We examine these developments in turn to find out.

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