Bloomberg Law Publishes Kahn and Schreiber Article on USPTO’s Patent Eligibility Guidance

Bloomberg Law has published the article “INSIGHT: Making Sense of What Technology Is Patentable,” written by Akin Gump intellectual property partner Michael Kahn and associate Andrew Schreiber. The article, the first in a two-part series, looks at guidance from the U.S. Patent and Trademark Office (USPTO) earlier this year regarding patent eligibility that clarifies inconsistent analyses by recent court decisions.

Kahn and Schreiber begin by noting that the new guidance stems from developments within Section 101 jurisprudence that has “created significant uncertainty for patent protection in software and computer-implemented technology” over the past five years. (Section 101 is a part of the U.S. Code governing patentable subject matter.) In fact, they write, since the Supreme Court’s decision in Alice Corp. v. CLS Bank in 2014 through the end of 2018, more than half of all “challenged technology-centric patents have been invalidated on Section 101 grounds as practitioners and judges alike worked to interpret the new eligibility standards.” Once seen as a low threshold to patentability, they add, subject matter eligibility under Section 101 “has devolved into a bug in the patent system.”

The article then outlines the USPTO’s three critical changes from prior guidance and looks at the practical application of the changes. Kahn and Schreiber conclude by noting that “it remains to be seen how (and if) [the new guidance] will be followed by district court judges.” While the Federal Circuit has indicated it is not bound by the guidance, practitioners, they say, “are likely to incorporate the guidance alongside the application of developing case law to advise clients in this technical space.”

To read the full article, please click here.