Subject Matter Eligibility: Navigating Expanding Instability in Sect. 101 Inquiry

This CLE course will guide patent counsel on recent court decisions addressing Section 101 subject matter eligibility. The panel will discuss the USPTO Revised Patent Subject Matter Eligibility Guidance. The panel will address treatment at the examiner stage and how it fits with the current court treatment. The panel will provide best practices for applying the USPTO guidelines and court guidance in application drafting and prosecution.

The Federal Circuit Court of Appeal arguably extended the scope of patent-ineligible subject matter in its recent decision in Yu v. Apple (Fed. Cir. June 11, 2021). On appeal, the Federal Circuit rendered patent-ineligible a specialized camera claimed in the patent in question.

The split panel found that Claim One was directed to an abstract idea and merely invokes well-known processes and machinery. The court rejected Yu's assertion that the claims are directed to patent-eligible applications of the abstract idea.

Judge Newman disagreed, finding the majority were fundamentally wrong in considering the novelty of the device in its Section 101 analysis. Judge Newman's dissent stated, "[t]he case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness."

Listen as our authoritative panel of IP attorneys examines the recent decisions addressing Section 101 subject matter eligibility as well as the dissents. The panel will also discuss the USPTO Revised Patent Subject Matter Eligibility Guidance. The panel will address the seeming clarity at the examiner stage and the uncertainty in the Federal Circuit. The panel will provide best practices for applying the USPTO guidelines and court guidance in application drafting and prosecution.