Beyond abstraction: applying the brakes to runaway patent ineligibility.

Abstract

Journal of Law and the Biosciences, 697–703 doi:10.1093/jlb/lsw055 Advance Access Publication 22 November 2016 Response Beyond abstraction: applying the brakes to runaway patent ineligibility Dan L. Burk School of Law, University of California-Irvine, 401 East Peltason Drive, Irvine, CA 92697, USA Corresponding author: E-mail: dburk@law.uci.edu INTRODUCTION I was pleased to read and am now pleased to respond to the commentaries by Minssen and Schwartz 1 and by Thambisetty 2 on my article Dolly and Alice. 3 Each of these com- mentaries offers a welcome comparative perspective to the doctrinal quandaries that I initially pointed out, indicating some prescription for the American patent eligibility problem based upon the parallel European experience. But it seems already clear that the American courts, responding to an avalanche of lower court patent invalidations based on the Alice patent eligibility test, have already begun fashioning their own idiosyncratic response to the common global difficulty of distinguishing patentable subject matter. A set of recent opinions makes clear the de- termination of the United States Court of Appeals for the Federal Circuit to apply the brakes to runaway abstraction analysis under the Alice test. In some respects this re- sponse may indeed parallel that in other jurisdictions, but in major respects it departs from the prescriptions detailed by the commentators. APPLYING THE BR AKES Recent subject matter opinions by the United States Supreme court have thrown patent eligibility into some disarray, so there is a natural tendency to hope that the Supreme Court might intervene to sort out the chaos in the lower courts. Minssen and Schwartz look particularly to the Federal Circuit’s opinion in Ariosa Diagnostics v Sequenom, Inc., 4 hoping that it might be taken up by the Supreme Court as an additional opportunity to Timo Minssen & Robert M. Schwartz, Separating Sheep from Goats: A European View on the Patent Eligibility of Biomedical Diagnostic Methods, 3 J. L. & B IOSCI . 365 (2016). Siva Thambisetty, Alice and ‘Something More’: The Drift Towards European Patent Jurisprudence, 3 J. L. & B IOSCI . Dan L. Burk, Dolly and Alice, 3 J. L. & B IOSCI . 606 (2015). 788 F.3d 1371 (Fed. Cir. 2015). C The Author 2016. Published by Oxford University Press on behalf of Duke University School of Law, Harvard Law School, Oxford University Press, and Stanford Law School. This is an Open Access arti- cle distributed under the terms of the Creative Commons Attribution-NonCommercial-NoDerivs licence (http://creativecommons.org/licenses/by-nc-nd/4.0/), which permits non-commercial reproduction and distri- bution of the work, in any medium, provided the original work is not altered or transformed in any way, and that the work is properly cited. For commercial re-use, please contact journals.permissions@oup.com