Kia Freeman Quoted in “Fed. Circ. Ruling Shows Limits of USPTO Eligibility Guidance”—Law360

04/03/19

The Federal Circuit explains it need not defer to the US Patent and Trademark Office’s (USPTO’s) guidance on patent eligibility, and that patents issued by the office are subject to scrutiny and possible invalidation in court.

The appeals court recently affirmed summary invalidation of two Cleveland Clinic patents on diagnostic technology, rejecting the Clinic’s argument that the Office’s eligibility guidance indicates its patents are valid and finding that they claim a patent-ineligible natural law.

McCarter partner Kia Freeman said, “For companies seeking patent protection, the Cleveland Clinic decision means that the USPTO, following its own guidance, may be issuing invalid patents,” adding that it shows the office “will not be allowed to lead the way out of the eligibility quagmire.”

“I thought it was a good try,” Kia said. “Sometimes the Federal Circuit is inclined to give deference to the USPTO, but obviously not here.”

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