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Clarity of thought: telling Congress how to improve §101


Brian Emfinger

Clarity of thought: telling Congress how to improve §101

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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.

Brian Emfinger, Banner & Witcoff, stakeholders, §101, Mayo, patent eligibility, innovation, Alice, USPTO,


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