35 U.S.C. § 101: Subject Matter Eligibility

Since the U.S. Supreme Court’s decision in 2014 on patent subject matter eligibility, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, this area of law has been rapidly evolving, and it’s a subject NRVIP Law is monitoring closely.

In a case relating to a Refrigeration Control System, even after making several amendments in attempts to address the examiner’s concerns, the examiner continued to maintain the patent eligibility rejection in error. Appealing to the Patent Trial and Appeal Board (PTAB) was best. A Board decision reversing the examiner on all counts was obtained a little over 2 years from filing the appeal brief and the patent issued shortly thereafter.

In light of seemingly inconsistent patent eligibility decisions at the District Court and Federal Circuit, there is much debate among practitioners about what is and what is not eligible for patent protection, especially in the areas of software and life sciences.

Even though the USPTO makes efforts to keep its examiners informed about recent case law, the examining corps as a whole appears to be very conservative in allowing cases where patent eligibility rejections are an issue.

If a subject matter eligibility rejection cannot be overcome, appeal is a great option. With appeal, not only does a fresh set of eyes examine the patent eligibility issue (three judges of the PTAB review each appeal), but a substantial amount of time will likely pass during pendency of the appeal (typically about two to three years), allowing for more favorable case law to emerge in the meantime.

The movement from the industrial age to the information age is happening, albeit slowly.

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