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Supreme Court Passes on 101 Patent Eligibility

January 14, 2020
Post by Kirk M. Hartung

On January 13, the US Supreme Court denied the petition for certiorari by Athena Diagnostics seeking the highest Court’s review of patent eligibility under 35. USC 101. The petition relates to the en banc decision by the Court of Appeals for the Federal Circuit in Athena Diagnostics v. Mayo on July 3, 2019, wherein the appellate Court ruled that the medical diagnostic invention of the patent was not eligible for patent protection, even though all 12 justices stated that they thought the invention should be eligible. The Federal Circuit’s decision included three concurring opinions and four dissenting opinions. (See my prior Filewrapper blog posts Patent Judges Agree that Patent Eligibility Law Needs Fixing: Parts 1 and 2, published August 8 and 14, 2019; and Federal Circuit Judge Calls for a Fix to the “Abstract Idea” Mess: Parts 1-4, published July – August, 2018.)

The Supreme Court’s denial is disappointing to many leaders and practitioners in the IP world, who believe the current state of the law on patent eligibility is an unpredictable mess. The Supreme Court has had nearly 50 opportunities through petitions for certiorari over the past 10 years to address the eligibility issues raised by its precedent and has denied them all. The mess began in 2010 with the SCOTUS Bilski case, continued with its 2012 Mayo decision, and carried on with their Alice 2014 decision.

The US Patent and Trademark Office has provided guidelines on eligibility, in an effort to help clarify matters, but the Courts are not bound by these guidelines. (See my prior blog post, Patent Eligibility: Hope from the PTO Director, published September 25, 2018.) The Federal Circuit Court has been reluctant or unable to reconcile inconsistent decisions of its own and by the Supreme Court.

The last, best, or only hope to fix these legal issues appears to be with Congress, who held hearings last summer on patent eligibility. (See my prior blog posts, Congress Considers a Patent Eligibility Overhaul, published February 27, 2019; and1st Draft From Congress on Section 101 Reform, published May 23, 2019.) Despite substantial evidence that patent eligibility is broken, this work in Congress has stalled. Currently, there is no immediate sign that anything will change. Unfortunately, this national problem will continue for the foreseeable future.

 




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