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IP: The murky morass plaguing the patent system

A look back to how we've gotten to this point with section 101 of the 1952 Patent Act

Historically, the only role of section 101 of the 1952 Patent Act was to identify the types of subject matter — a “process, machine, manufacture, or composition of matter” — that are eligible for a patent if “the conditions and requirements” of the Patent Act are satisfied. In 1966, the Supreme Court acknowledged that other provisions of the Patent Act (including sections 102 and 103) are the principal tools that Congress provided for drawing a distinction between eligible inventions that are and are not patentable. Years later, the Court acknowledged that Congress intended in section 101 that the patent laws should be given wide scope. And as recently as 2002, the Court acknowledged that section 101 is a dynamic provision designed to encompass new and unforeseen inventions. Yet, despite these acknowledgements, the Court has seemingly ignored section 101’s limited role, and recently agreed to decide whether computer-implemented processes are patent-eligible under the Court’s interpretation of section 101.

Since 1952, the Court has said that laws of nature, physical phenomena, and abstract ideas are not patent-eligible under section 101. More recently, the Court has decided a number of cases that turned on its interpretation of these exceptions. Those interpretations resulted in unanimous decisions. But that unanimity led to anything but clarity among those burdened with following the decisions. Indeed, the Court of Appeals for the Federal Circuit, whose judgment in Alice Corporation v. CLS Bank is now under review by the Supreme Court, has characterized the section 101 jurisprudence as a “swamp” and a “murky morass.” Other than the party that prevailed below, nobody argued that the Supreme Court should refrain from interpreting its exceptions yet again. With tempered expectations, the Court’s forthcoming decision may provide some clarity.

Contributing Author

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Sandip H. Patel

Sandip H. Patel is a partner at Marshall, Gerstein & Borun LLP. His practice focuses on patent prosecution and contested patent disputes in...

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