All I Want for IP in 2023: Kicking off the New Year with the IP Community’s Wildest Dreams

The IPWatchdog asked Finnegan partner Christopher Johns what is on his patent wish list for 2023.

“Like many others, U.S. patent eligibility is on my wish list. But I hope Santa makes some extra stops this year.”

The USPTO applies one version of the test. Unlike the courts, which compare claim elements to earlier cases, examiners need only identify whether a claim recites elements that fall within certain “groupings of abstract ideas.” District court invalidity rates vary wildly, and the Federal Circuit’s panels contradict each other frequently. Clarity could come this year in the form of a Supreme Court decision in Interactive Wearables v. Polar Electro. Senator Tillis’ Patent Eligibility Restoration Act (S.4734) would certainly shake things up, but as others have noted, it could make things worse.

Last summer, the Canadian Federal Court threw out the Canadian Intellectual Property Office’s “problem-solution” approach to eligibility. The Office has since appealed that decision and has not yet provided a revised version of its guidance. The appeal could lead to new guidance, once decided.

Finally, in Australia, there was a glimmer of hope from Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents. The case was expected to provide some clarity in the software space. One of the seven judges on the High Court, however, fell ill and was not able to take part in the hearing or decision. The court was evenly divided on whether the claimed invention provided a technical contribution to the art. The appeal was dismissed without any established precedent.”

Read “All I Want for IP in 2023: Kicking off the New Year with the IP Community’s Wildest Dreams”