- Published: 16 May 2018 16 May 2018
By Jeffrey C. Norris, Partner, Standley Law Group LLP
The determination of what constitutes patent eligible subject matter has been at the forefront of patent law in recent years. The United States Code has long held that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Judicially-created exceptions to eligibility have, however, lead to uncertainty. In 2014, the United States Supreme Court addressed the patent eligibility of an invention for a computer-implemented scheme for mitigating settlement risk, wherein the Court determined that the invention was directed to patent-ineligible subject matter. See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347. In the wake of that decision, there has been heightened dispute and confusion about what qualifies as patent eligible subject matter, as well as the mechanisms used to make that determination. Inventions in fields such as biotech, business methods, and software have been caught in the crosshairs.