Is the Supreme Court’s Patentable Subject Matter Test Overly Ambiguous? An Empirical Test

27 Pages Posted: 16 Feb 2018 Last revised: 2 Jul 2019

See all articles by Jason Reinecke

Jason Reinecke

Marquette University - Law School

Date Written: February 13, 2018

Abstract

In four cases handed down between 2010 and 2014, the Supreme Court articulated a new two-step patent eligibility test that drastically reduced the scope of patent protection for software inventions. Scholars have described the test as “impossible to administer in a coherent, consistent way,” “a foggy standard,” “too philosophical and policy based to be administrable,” a “crisis of confusion,” “rife with indeterminacy,” and one that “forces lower courts to engage in mental gymnastics.”

This Article provides the first empirical test of these assertions. In particular, 231 patent attorneys predicted how courts would rule on the subject matter eligibility of litigated software patent claims, and the results were compared with the actual district court rulings. Among other findings, the results suggest that while the test is certainly not a beacon of absolute clarity, it is also not as amorphous as many commentators have suggested.

Keywords: patent, patent-eligibility, patent eligibility, subject matter, subject matter eligibility, Alice, Mayo, ambiguous, vague, difficult to administer, 101, section 101, Alice v. CLS Bank

Suggested Citation

Reinecke, Jason, Is the Supreme Court’s Patentable Subject Matter Test Overly Ambiguous? An Empirical Test (February 13, 2018). Available at SSRN: https://ssrn.com/abstract=3123524 or http://dx.doi.org/10.2139/ssrn.3123524

Jason Reinecke (Contact Author)

Marquette University - Law School ( email )

Eckstein Hall
P.O. Box 1881
Milwaukee, WI 53201
United States

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