How Counsel Balance USPTO and Court Edicts on Section 101

Navigating Section 101 criteria for eligibility has been an ongoing challenge for patent owners, despite the U.S. Patent and Trademark Office’s (USPTO) 2019 revised guidance. Applications that do make it through the USPTO are often not upheld in federal district and appellate courts, where judges have noted that they are not beholden to the USPTO’s guidance. Managing Intellectual Property interviewed Finnegan partner and leader of the firm's litigation section, Frank DeCosta, for his insight on how companies can overcome Section 101 challenges.

Frank said he works with clients to determine whether trade secret protection might be a better route for certain inventions since it provides more certainty. He also noted that there is no indication that one court is more likely to take USPTO Section 101 guidance into account than others. “It’s not just a Texas versus Delaware versus California issue. Judges within the same districts are coming up with different conclusions.”

Frank also indicated that he tries to make clear distinctions when addressing subject matter, novelty, and obviousness in patent disclosure to avoid any confusion between Sections 101, 102 (novelty), and 103 (obviousness).

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