Patenting strategies post-Enfish


Christa Brown-Sanford

Patenting strategies post-Enfish

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While US courts and the USPTO continue to apply the Mayo test differently, patent practitioners should consider three strategies to promote subject matter eligibility in light of Alice and Enfish, says Christa Brown-Sanford of Baker Botts.

The US patent eligibility doctrine was upended by the Supreme Court’s Alice v CLS Bank case, which applied the two-step Mayo v Prometheus test to computer-related inventions. The first, or “ineligible concept”, step is to determine whether the claim at issue is directed to a law of nature, a natural phenomenon, or an abstract idea. If it’s not, the claim is eligible under 35 USC §101. If the claim is directed to an ineligible concept, the second, or “inventive concept”, step is to determine whether an inventive concept exists that is sufficient to transform the claim into patent-eligible subject matter. If an inventive concept exists, the claim is eligible.

Even with this framework, its application varies across courts and within the US Patent and Trademark Office (USPTO). The US Court of Appeals for the Federal Circuit’s Enfish v Microsoft decision in May elaborated on how to apply Mayo to computer-related inventions.

After Alice, §101 rejections increased significantly, but Enfish has taken a more permissive approach to computer-related technology, and software in particular.

Christa Brown-Sanford, Baker Botts, patent, patent practitioners, Mayo, Alice, USPTO, TLI, US District Court for the Eastern District of Texas, Enfish,