Federal Circuit Unable to Agree on Subject Matter Eligibility Test for Computer-Related Inventions
On Friday May 10, 2013, the Federal Circuit issued an en banc decision in the CLS Bank v. Alice Corp. case. In this case, the Federal Circuit considered the scope of patentable subject matter (35 U.S.C. § 101) for computer-related inventions. Unfortunately, the Federal Circuit was unable to reach a majority consensus on the proper test to use for making such determinations. As a result, it is likely that the Supreme Court will take this case and provide guidance on this topic. In the meantime, claiming strategies should continue to include computer-tying limitations where possible, but dramatic changes to prosecution strategies should be avoided until such time as the Supreme Court speaks on the issue or we receive clear guidance from the Federal Circuit. Also, given the confusion surrounding § 101, it seems wise to raise § 101 as a defense in patent litigation or as a challenge in post-grant proceedings where appropriate.