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ARTICLE · 09 AUGUST 2016

Fed. Circ. Clarifies The Test For Patentable Subject Matter

Stroock & Stroock & Lavan LLP
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A recent Federal Circuit decision should bring hope to those discouraged by recent decisions invalidating patents for lacking patentable subject matter.

United StatesIntellectual Property
Matthew Siegal
Matthew Siegal
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Originally published by Law360

A recent Federal Circuit decision should bring hope to those discouraged by recent decisions invalidating patents for lacking patentable subject matter. The simplistic application by many district courts of the "laws of nature are unpatentable subject matter" test articulated by the U.S. Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) may have led some to conclude that thousands of patents are at risk. However, comparing the claims held to be directed to an unpatentable law of nature in Ariosa Diagnostics Inc. v.  Sequenom  Inc., 788 F.3d 1371 (Fed. Cir. 2015), with claims that were deemed valid in Rapid Litigation Management Ltd. v. CellzDirect Inc., No. 2015-1570, 2016 WL 3606624 (Fed. Cir. July 5, 2016), may help to allay those fears, and may help practitioners write better claims and defend patents against attacks of invalidity.

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