Patent Eligibility Post-Myriad: A Reinvigorated Judicial Wildcard of Uncertain Effect

In the 1970s and early 1980s, the U.S. Supreme Court issued several landmark decisions establishing the contours of patent eligibility—a judicially created doctrine that serves as a gatekeeper to prevent the patenting of subject matter deemed so fundamental as to be better left unpatented. Over the course of the next twenty-five years, the Court of Appeals for the Federal Circuit oversaw a progressive expansion in the scope of subject matter deemed patent eligible, highlighted by the adoption in the 1990s of a “useful, concrete, and tangible” test for patent eligibility, which for all practical purposes seemed to subsume the patent eligibility inquiry with the requirement of utility. However, in 2006 the Supreme Court actively reengaged the doctrine, and since that time the Court has granted certiorari in five patent eligibility cases, resulting in four decisions (the first case was dismissed after oral argument). In every case in which the Court reached a decision, all of the patent claims at issue were ruled invalid for covering patent-ineligible subject matter. Unfortunately, these decisions provide little guidance for the lower courts and the Patent Office with respect to the criteria to be applied in assessing patent eligibility—and little coherent insight into exactly what the Court is trying to accomplish. This Essay identifies some of the critical open questions that have been raised by the Supreme Court’s reinvigoration of patent eligibility, and it reviews some of the early efforts by lower courts to apply the heightened standard in a manner that maintains adequate incentives for innovation while addressing the legitimate policy concerns underlying the Supreme Court’s current obsession with the doctrine.