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ARTICLE · 18 DECEMBER 2019

Solicitor General On Patent Eligibility

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The Solicitor General (SG) was invited by the Supreme Court to provide comments on the certiorari petitions filed by Berkheimer and Hikma to review the Federal Circuit's 101

United StatesIntellectual Property
Richard D. Kelly
Richard D. Kelly
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  The Solicitor General (SG) was invited by the Supreme Court to provide comments on the certiorari petitions filed by Berkheimer and Hikma to review the Federal Circuit’s 101 decisions adverse to them. The two briefs have numerous similarities including identifying the Court’s decision in Bilski1 as starting the patent eligibility confusion by not grounding its decision on interpreting the meaning of the 35 U..S.C. 101 terms “process, machine, manufacture, [and] composition of matter.” The SG asserts that in Bilski the Court did not ground its decision on the stature terms but instead found three exceptions to be not required by the statutory text: laws of nature, physical phenomenon, and abstract ideas. While these concepts are found earlier Supreme Court decisions, Bilski represented the first time they were used independent of the statutory language or constitutional concept of the “useful arts.” The SG then described Mayo2 as continuing the Court’s Bilski practic

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