Considerations For Innovators When Navigating Patent Eligibility On The International Stage

• Published date: 02 December 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Paul W. Browning, Christopher Johns, Sara A. Leiman and Yelena Morozova

Finnegan attorneys Paul Browning, Christopher Johns, Sara Leiman and Yelena Morozova explain some of the differences between patent-eligibility standards in the U.S. and those in other parts of the world.

Ever year patentees file more patent applications in a wider range of countries. Since the Patent Cooperation Treaty (PCT) came into force in 1978, nearly four million PCT applications have been filed to enable patentees to obtain international protection for their inventions ' and more than half of these PCT applications were filed in the last ten years.¹A broad patent portfolio is of increasing importance to large and small companies in a variety of fields.

Yet, prosecuting patents in different countries can be challenging. Each country has its own laws for pursuing patent applications and achieving enforceable patents. And while treaties and other agreements (like the Paris Convention and the PCT) lay a foundation for many countries' patent systems, local patent law varies widely on the issue of patent eligibility.

Patent attorneys and the clients they serve therefore must be cognizant of these differences in eligibility law in different jurisdictions and take them into account when pursuing patent protection internationally.

In this article we focus on some of the more significant differences in subject matter eligibility in the United States and before the European Patent Office (EPO) and further briefly discuss the different approaches taken in other important jurisdictions around the world.

A. Eligibility Law in the United States

Patent eligibility in the United States is defined, in the first instance, by statute, which broadly permits the patenting of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

This broad scope has been limited, however, by courts, which have identified and, in some cases, broadly applied certain judicial exceptions to patent eligibility. Specifically, the U.S. Supreme Court identified "laws of nature, natural phenomena, and abstract ideas" as judicial exceptions to patent eligibility, holding that this subject matter may not be patented under U.S. law because they constitute the "basic tools of scientific and technological work."

The Supreme Court held that permitting patent rights that monopolize such basic tools may impede innovation rather than promote it, thus contradicting the purpose of patenting as dictated by the United States Constitution. Applying this principle, the Supreme Court has developed a two-part test (often called the "Mayo/Alice" test) to determine if patent claims are improperly directed to judicial exceptions and are thus ineligible for patenting.

In the first step of the Mayo/Alice test, the claims at issue are examined to determine if they are directed to any of the judicial exceptions, namely, laws of nature, natural phenomena or abstract ideas. If not, then the patent claims are patent eligible. If the claims are directed to a judicial exception, however, the examination proceeds to the second step of the test.

In the second step, the elements of each claim are considered, "both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application."²This test may sound straight-forward, but its application has been challenging and, at times, controversial.

In the electrical arts, the patent eligibility analysis generally involves...