The United States Patent and Trademark Office Director David Kappos posted a blogpost called “Some Thoughts on Patentability” which discusses a recent Federal Circuit decision in CLS Bank International v. Alice Corporation and the lessons we should learn from the Federal Circuit.
“Based on my experience, I appreciate the wisdom of the court’s discussion relating to resolving disputed claims by focusing initially on patentability requirements of § 102, 103, and 112, rather than § 101. I have found that when claims are refined to distinguish over the prior art, recite definite boundaries, and be fully enabled based on a complete written description, they do not usually encounter issues of eligibility based on reciting mere abstract ideas or broad fundamental concepts. Put another way, every business looks for opportunities to sequence workflow so that the first issues addressed are the ones that can simplify or completely resolve other issues. This is good basic management for businesses, and for patent offices.”
A direct response to Justice Breyer’s decision in Mayo v. Prometheus? Perhaps. At the least, it’s a positive signal of the PTO’s willingness to voice its own expert views on these important questions as similar issues arise in cases like Myriad.