Subject matter eligibility in the United States has recently become a key issue in patent law that has impacted a wide range of technologies in both the life sciences and technology industries. Despite the increased importance of eligibility, there remains a great deal of uncertainty and confusion surrounding the tests that have been implemented by the courts and the U.S. Patent and Trademark Office to assess eligibility.
Following the U.S. Supreme Court's Mayo and Alice decisions, the USPTO adopted a divergent eligibility analysis framework as it relates to particular forms of subject matter. In particular, one key distinction that exists within that eligibility framework is an apparent "detour route" only available to products of nature — which, not surprisingly, skews heavily to the life sciences industry and is largely irrelevant to the technology industry. This "detour route" involves initially assessing whether a composition claim is "directed to" a product of nature exception via a "markedly different" test.
The USPTO Diverges in Use of the Markedly Different Test
The "markedly different" test focuses on whether claimed subject matter is structurally or functionally different relative to a naturally occurring counterpart or set of counterparts. If the claimed subject matter is different, the USPTO does not consider the claim to be "directed to" an exception, which can conclude the eligibility inquiry in the applicant's favor. As such, the "markedly different" test serves a de facto gating function for assessing whether a claim is "directed to" a product of nature exception. Such a gating function remains (from the USPTO's perspective) unavailable to the other exceptions based on its current guidance memoranda even though many claims in technology-focused patent applications encompass functional differences relative to the state of the art. Instead, the inclusion of a law of nature or abstract idea exception in a claim is more often than not regarded as sufficient to consider the claim as being "directed to" the corresponding exception in the context of the eligibility framework analysis.
While this divergent eligibility analysis framework largely continues to persist at the USPTO, the Federal Circuit has recently begun to find eligibility in a handful of select patent cases including DDR, Enfish, McRO, Rapid Litigation Management and Bascom, among other more recent cases. While not all of these select cases are perfectly aligned with the "markedly different" test at the USPTO, many of their holdings are based on similar reasoning that focuses on certain functional differences that exist between the claimed invention at issue in each case and the respective "state of the art." The similarity of the reasoning offered by these recent Federal Circuit cases (in particular Bascom) with the holdings of the key Supreme Court cases underlying the "markedly different" test suggests a more consistent, and less confusing, approach to patent eligibility determination may be near.
Download - A More Consistent USPTO Approach to Patent Eligibility
Originally published by Law360 on July 17, 2017.
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