ra2studio / Shutterstock.com
Amid the continuing uncertainty about subject matter eligibility in the US, particularly for computer software, stakeholders need to tell US Congress why clarity is so important and how the situation can be improved. Brian Emfinger of Banner & Witcoff makes some suggestions.
Economist Frédéric Bastiat used the parable of the broken window to illustrate that assessing an activity’s merits must take into account not only the obvious results of that activity, but also what is unseen. In short, Bastiat reminds us that the economic activity prompted by repairing a broken window—activity that is seen—must be considered along with the unseen economic activity that would have occurred had there been no need for those repairs.
In determining our patent policy and the corresponding laws and rules that implement it, so too must we consider what is not seen.
Despite the best efforts of the courts and the US Patent and Trademark Office (USPTO), the current test for identifying patent-eligible subject matter under §101 has proved unworkable. Court decisions and USPTO guidelines have raised more questions than they have answered. As a result, stakeholders at every level are left with uncertainty about when patents and patent applications satisfy the requirements of §101. This uncertainty threatens to deprive society and consumers of the benefits of a patent system having clearly defined requirements for obtaining patent protection.
To continue reading, you need a subscription to WIPR. Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email James Lynn on firstname.lastname@example.org.
Brian Emfinger, Banner & Witcoff, stakeholders, §101, Mayo, patent eligibility, innovation, Alice, USPTO,