High Court’s Unanimous Mayo Decision Provokes Mixed Reactions from Stakeholders

To some stakeholders, the Supreme Court’s Mayo ruling represents a sea of change. To others, the Court finally provided clarity on the Section 101 analysis. Finnegan partner Erika H. Arner stated, “Unfortunately I think this framework will not help clarify the Section 101 analysis. I think lower courts and the patent office will struggle with the subjective inquiry of what is ‘enough’ to render a claim patentable.” Ms. Arner also saw “a shift in the Court’s thinking.” She said, “Rather than emphasizing, as it usually does, that Congress intended the scope of patent protection to be as broad as possible, the Mayo Court focuses on the judge-made exclusions from patentable subject matter, reasoning that narrower patent protection may better promote innovation. This apparent shift by the full Court may signal the need for clarification by Congress.”