Experts: Broad Patent Eligibility May Survive Under Mayo, But With More Guidance

After the high court’s oral arguments in Mayo Collaborative Services v. Prometheus Laboratories Inc., some experts have expressed concern that the Court might incorporate novelty and obviousness considerations into Section 101 analysis, while others have thought that U.S. Solicitor General Donald B. Verrilli Jr. convinced the Court that unworthy patents are best weeded out under Sections 102 and 103 of the patent statutes. Finnegan partner Denise W. DeFranco, who authored the American Intellectual Property Law Association (AIPLA) brief in Mayo, has taken the middle ground, saying “I’m worried so many of the justices seemed interested in putting Section 102 and 103 concerns into 101…but I’m optimistic that the Court will continue to see these types of claims as patent eligible.’’