Federal Circuit Judges Encourage Congress to Act on Patent EligibilityJune 5, 2018

Patent eligibility under 35 U.S.C 101 has been a hot topic in the past few years and in view of several U.S. Supreme Court decisions, including the 2014 caseAlice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347. 

In Alice, the Supreme Court concluded that abstract ideas are not patentable, absent something more, beyond well-understood, routine, conventional activities known to the industry. However, the Supreme Court has never defined “abstract”. Last week, in an unusual concurring opinion, Judges Lourie and Newman from the U.S. Court of Appeals for the Federal Circuit, encouraged Congress to clarify patent eligible subject matter. In Berkheimer v. HP Inc., case number 2017-1437 (May 31, 2018), these judges lamented the current confusion arising from the Supreme Court decisions. Other highly respected and qualified people have also criticized the patent eligibility dilemma, including retired Chief Judge Michel from the Federal Circuit, who stated that the U.S. patent system is in a crisis mode; David Kappos, former director of the US Patent and Trademark Office, who stated that the eligibility standard is in total chaos; and current PTO Director Andrei Iancu, who acknowledged that it is difficult for Patent Office examiners to apply the Supreme Court’s two-part eligibility test. 

While several intellectual property organizations and industry groups have proposed legislation regarding patent eligibility, there are no current bills pending in Congress regarding this legal issue.