Last month during the AIPPI Congress in London I had the privilege of interviewing USPTO Director Andrei Iancu for a full hour during one of the lunch sessions. As always, Director Iancu's comments were thoughtful, candid, and delivered with entertaining flair. We spent a good part of our time discussing the issues around patent eligibility in the United States under 35 U.S.C. § 101. He discussed the USPTO's most recent guidelines on patent eligibility (see our earlier article here) and the Director's belief that if those guidelines are followed, an equitable balance can be reached between preventing patents on truly abstract concepts and allowing patents that protect and encourage innovation. When asked by the audience if any court has followed the USPTO guidelines, he gave a simple answer: "not yet."

 

As encouraged as I believe all of us in the room were by Director Iancu's positive comments, the latest § 101 decision from the Federal Circuit not only fails to follow the logic of the USPTO guidelines, it reaches what is, in the opinion of this author, a new low in patent eligibility jurisprudence. Because, if a method of manufacturing a propeller shaft is not eligible subject matter, it is difficult to imagine where a future line might be drawn. Beyond the unfortunate outcome for American Axle & Manufacturing, Inc. ("AAM"), the majority's analysis "smushes" the law of patent eligibility, enablement, claim definiteness, and substantive patentability together into an "eligibility goulash" that serves only to foster further uncertainty in an area of law already fraught with unpredictability. Indeed, well beyond this one appellee, industry as a whole will suffer from this latest attempt to cast technical (albeit perhaps not adequately described or new) inventions as abstract concepts.