IP Flash: Patent Ineligibility

By Ute Kilger, Patent Attorney, European Patent and Trade Mark Attorney, Boehmert & Boehmert Anwaltspartnerschaft mbB

The US Supreme Court has mutilated US Patent law with the law of nature doctrine created from the decisions Mayo v. Prometheus and AMP v. Myriad Genetics. Since then, the US-PTO has implemented guidelines, and the highest patent court in the US, the CAFC, has issued numerous decisions applying these Supreme Court decisions, making it hard or impossible to obtain useful patent protection and/or enforce it, in particular for inventions directed to diagnostic methods, or directed to naturally occurring substances.

US insider blog IPWatchdog stated that “Mayo v. Prometheus is a lawless decision by a Court that has become too powerful, and it continues to wreak havoc on the patent system and innovators. The net effect of the decision has resulted in patent protection being easier to obtain for cutting edge software, biotech, genetic, and medical innovations in Europe, Canada, Australia, and even China.” These decisions made valuable inventions like diagnostic methods ineligible to obtain patent protection in the US because they allegedly encompassed nothing more than a “law of nature“.
On 22 May, 2019 a group of Senators and Representatives of the US Congress released the draft text of a bipartisan, bicameral proposal to reform Section 101 of the Patent Act. Senate Hearings on the topic will be held on 4, 5, and 11 June. The draft text states that “the provisions of 101 shall be construed in favour of eligibility.” Further: “No implicit or other judicially created exceptions to subject matter eligibility, including ‘abstract ideas,’ ‘laws of nature,’ or ‘natural phenomena,’ shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.” All of us who have tried to get useful protection for innovations affected by this doctrine have experienced receiving office actions from the US-PTO with pages full of 101 objections, and we can certainly understand how important this proposal may be for the innovative industry. We had all hoped that the Congress will overrule the Supreme Court  one day, but no one really believed it. Let’s keep our fingers crossed that the dark ages of patent ineligibility will be gone soon. Our recommendation to patent application holders is to keep alive affected pending applications by all means – be it by request for continued examination (RCE) or by continuing patent applications (CIP), in order to have a chance of getting useful patent protection when the nightmare of patent ineligibility ends hopefully soon.