30th April, 2019
The USPTO and Federal Circuit have struggled with defining patent subject matter eligibility after the Mayo, Myriad and Alice Supreme Court cases. Holdings in some recent Federal Circuit cases are inconsistent with guidelines and examples issued by the USPTO to assist practitioners and applicants in drafting eligible claims, thus creating more uncertainty.
Federal Circuit Judges have included in certain opinions a plea to Congress to take some action to clarify 35 USC §101 to enable the courts to determine the metes and bounds of patent eligible subject matter.
During the 115th Congress, 2nd Session, HR 6264 was introduced to propose amendments to §101 consistent with amendments suggested by various intellectual property organizations.
Recently, certain members of Congress have released a “bipartisan, bicameral framework on Section 101 patent reform” as a further effort to clarify what should be considered patent eligible subject matter. While this “framework” is still vague, it does reflect Congress’s increasing interest in addressing the §101 issue.