Federal Circuit to Re-Assess Standards for Patent-Eligible Subject Matter


The subject matter requirement prescribed in 35 U.S.C. section 101 has lately been back on the Federal Circuit Court's radar. Section 101 obligates a patent examiner to determine that the claimed invention qualifies as subject matter deemed patentable before she evaluates any other requirement for patentability. Until the fall of last year, this requirement was viewed generally as encompassing a broad scope of subject matter. The phrase "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," 35 U.S.C. section 101, had been interpreted broadly by both the U.S. Supreme Court and the Federal Circuit Court of Appeals.

On Sept. 20, 2007, the Federal Circuit handed down two decisions that revisited the previously vague limitations placed on patentable subject matter, trimming back the overgrown hedges that had been blurring the boundaries surrounding the requirement, particularly for process claims. In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007); In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). More recently, on Feb. 15, 2008, the Federal Circuit sua sponte "granted" an en banc hearing in the In re Bilski appeal (No. 2007-1130) signaling its intention to further define - or re-define, as the case may be - the standard for determining when a process claim constitutes patenteligible subject matter under section 101.

Please see full newsletter for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Fenwick & West LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.