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The Debate Surrounding Patent Eligible Subject Matter; As Illustrated By Me Arguing With Some Guy At A Party

Written by: on November 11, 2015 | Category: Blog | Tags:

Guy at party:  I have an idea I want to patent.

Me:  You can’t protect an idea with a patent.

Guy:  Shark Tank said you can protect your idea.

Me:  Shark Tank didn’t say that.

Guy:  Who even invited you to this party?

Me:  (inaudible mumbling)

Section 101 of the Patent Act (35 U.S.C. § 101 et al.) defines patentable subject matter as “any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof.”  Implied exceptions to eligibility include abstract ideas, laws of nature and natural phenomena.  See, Guy at Party, you can’t patent your idea!  Most people have good ideas that translate into a process, machine, manufacture or composition of matter.  However, technological advances and our growing “knowledge” economy have challenged the four categories of patentable matter, especially in three industries: biotechnology, including genes and living things; information technology, including computer programs and software; and business methods.  Since 2012, there have been three Supreme Court cases and four guidance publications issued by the U.S. Patent and Trademark Office on the topic of subject matter eligibility, which have led to a gentle panic among those in the know.

The major recent cases addressing eligible subject matter are: Mayo Collaborative Services v. Prometheus Laboratories, Inc. (132 S. Ct. 1289 (2012)); Association for Molecular Pathology v. Myriad Genetics, Inc. (133 S. Ct. 2107 (2013)); and Alice Corp. Pty. Ltd. v. CLS Bank International (134 S. Ct. 2347 (2014)).  In these three cases, the Supreme Court shook the IP world by invalidating patents for genetic and biomarker diagnostic tests/treatment and financial transactions, risk evaluation and methods.  In July, the United States Patent and Trademark Office issued Eligibility Examination Guidelines, which supplemented and updated the 2014 Interim Guidance on Subject Matter Eligibility with recent case law and clarification as to what constitutes patent-eligible subject matter.  The period for public comment on the guidelines ended at the end of October – various comments from large and small companies, bar associations and individuals are available on the USPTO website.  Now we wait and see how the PTO responds, while thousands of patent applications and inventions hang in the balance…


Attorney Nicole J. O’Hara, a member of the firm’s Business Services Group, has specific experience with intellectual property law.  She works with businesses large and small, advancing and managing patent portfolios, drafting patent applications, and resolving trademark, copyright, trade secret, and patent-related issues. She also negotiates contracts for the commercialization of intellectual property including licenses, confidentiality, material transfer, inter-institutional, service, and research contracts.

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