Patent Eligibility in an Unsettled Time

Washington, D.C. partner Bob Stoll presented at PLI’s Patent Briefing Series: “Patent Eligibility in an Unsettled Time,” on Monday, November 4.   Bob presented with U.S. patent attorney Gene Quinn and MBHB partner Kevin Noonan.  Together they discussed how after several years of turmoil, patent eligibility in a variety of economically significant technologies is extremely uncertain.

Despite such a state of disarray, patent practitioners must still give advice to clients who seek to patent their innovations.

Their presentation sought to answer the questions on the minds of practitioners during such an unsettled time. 

Some of the proposed questions were:

• Is it ethical to advise clients with software related innovations that they can expect to obtain a patent that will likely be valid and enforceable?
• Why is Myriad continuing to pursue putative infringers? Are the asserted claims really different than those deemed patent ineligible by the courts?
• What claiming techniques should be used in order to give software, natural products and medical diagnostic innovations the best chance of being patent eligible? Does claiming technique even matter?
• Will more elaborate specifications with greater written description be helpful?
• Is patent eligibility based on technological or legal considerations, and is any opinion other than the Supreme Court’s relevant in making this determination?