Advanced Patent Sect. 101 Eligibility: Latest Federal Circuit Decisions, PTAB Cases, and USPTO Guidelines

Description

The Federal Circuit's decision in Cleveland Clinic Foundation et al. v. True Health Diagnostics L.L.C. (Fed. Cir. 2019) demonstrated that just because a patent satisfies the USPTO's guidelines during prosecution does not mean that the Federal Circuit won't strike it down. In Cleveland Clinic, the Federal Circuit ignored and, in fact, criticized the USPTO's guidelines.

In another case [Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals U.S.A. Inc. (Fed. Cir. 2019)], the Federal Circuit reversed a decision of invalidity under 35 U.S.C. 101, concluding the method of treatment claims were patent-eligible for claiming an application of a natural relationship and not the natural relationship itself.

In 2019, the USPTO announced revised guidance for subject matter eligibility under Section 101. The 2019 Revised Patent Subject Matter Eligibility Guidance revises the procedures for determining whether a patent claim is directed to a judicial exception.

These decisions, among others, serve as a reminder that patent owners must not only consider USPTO guidance when drafting patent applications, they should keep in mind that case law supersedes agency guidance. And patent applications should satisfy both Federal Circuit case law and agency guidance.

Listen as our authoritative panel of patent attorneys examines recent Federal Circuit decisions and the 2019 revised guidelines. The panel will discuss the importance of satisfying both USPTO guidance on Section 101 and Federal Circuit Section 101 case law. The panel will offer their perspectives on handling both to get an invention patented.