Jan. 10, 2020

Hudson Institute Report: Saving Functional Claiming: The Mismatch of § 112 Reform in the § 101 Reform Debate



Patent-eligible subject matter, the doctrine that explains what types of inventions may be patented, is a mess. Over the last decade, the Supreme Court decided four cases that resulted in an unworkable test for patent eligibility and created extreme uncertainty and instability in the patent system. Although the United States Patent & Trademark Office attempted to provide guidance and clarity about patent-eligible subject matter through its 2019 Revised Patent Subject Matter Eligibility Guidance,1 courts quickly made it clear that the Patent Office’s attempt to fix patent eligibility was in vain.2 If the doctrine of patent-eligible subject matter will not be fixed by the courts and cannot be fixed by the Patent Office, the last hope for clarifying this area of law rests with Congress.

Read the report here.