Not So Fast: Questions of Fact May Preclude Early Patent-Eligibility Determinations Under Section 101

In an article published in the Spring 2018 Newsletter of the Federal Bar Association’s Intellectual Property Section, I discuss two recent decisions from the U.S. Court of Appeals for the Federal Circuit. The Court found that there were disputed issues of fact bearing on the “inventive step” prong of the test for patent subject matter eligibility that precluded judgment as a matter of law. As explained in the article, these decisions:

1. Make clear that questions of fact can and do underlie the patent eligibility inquiry,
2. Provide a roadmap for patent owners to stave off early eligibility rulings in litigation, and
3. Make it more difficult for patent examiners to support eligibility rejections during prosecution.

Article originally published on Federal Bar Association.