A Discussion of the State of Patent-Eligible Subject Matter

Oh Diehr, Was Myriad Just A Flook?

A Discussion of the State of Patent-Eligible Subject Matter

Have an ingenious idea involving computer software, business methods, or biotechnology? Want patent protection? Not so fast …

For 29 years following the 1981 case of Diamond v. Diehr, the Supreme Court did not meaningfully address the law of patent-eligible subject matter under 35 U.S.C. § 101. Then, in a flurry recent activity, the Court decided four patent eligibility cases between 2010 and 2014, including Bilski v. Kappos (2010), Mayo v. Prometheus (2012), Association for Molecular Pathology v. Myriad (2013), and Alice Corp. v. CLS Bank (2014). In all four cases, the Court invalidated one or more patent claims for falling within the judicially-created “exceptions” to § 101 that exclude “laws of nature, physical phenomena, and abstract ideas” from patent eligibility.

Join Irell & Manella attorneys Alan Heinrich and Chris Abernethy for a discussion on the current state of the law regarding patent-eligible subject matter, including an overview of how we got into the current morass, and where we go from here. Mr. Heinrich and Mr. Abernethy are the authors of the recent article, The Myriad Reasons to Hit ‘Reset’ on Patent-Eligibility Jurisprudence, 47 Loy. L.A. L. Rev. 117 (2013).

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