Takeaway: It is important to follow decisions of the federal courts when dealing with Section 101 issues during patent prosecution as the Federal Circuit has ruled that they are not bound by USPTO guidance.
Recently, the USPTO issued new guidance that many practitioners thought may open up the door to expand patent eligibility in areas such as software and business methods. However, this month, the Federal Circuit invalidated two patents that the court determined were not patent eligible as being a natural law. This case specifically addressed a question that many practitioners may have been wondering in the patent industry: whether the Federal Circuit would follow the USPTO’s newly issued eligibility guidance under § 101.
The Federal Circuit, in this case, determined that even though they respect the USPTO’s guidance, the court is not bound by its guidance. In other words, even though the USPTO has issued guidance on what may be approved as patentable out of the patent office, these patents may not remain eligible after being challenged in federal court.
This ruling makes patent eligibility under § 101 even more murky than it was before. As practitioners in the patent industry, it is important to keep federal court decisions in mind when prosecuting applications before the USPTO. Making arguments for eligibility that may help the patent issue in the short term may not be upheld in court, so it is important to continue to make arguments that are believed to overcome the test from the Supreme Court’s decision in Alice v. CLS Bank.