Section 102: A Dead Letter For Qualifying Claims

Originally published in Law360.

It has been three months since the U.S. Supreme Court's decision in Prometheus and, with the recent grant-vacate-remand of Ultramercial to the Federal Circuit, the patent bar is left to speculate on the application of this holding both within and outside of medical diagnostics.

This article investigates the court's conflation of the novelty inquiry under 35 USC § 102 with the patent-eligibility inquiry under § 101. We conclude that the court's desire to avoid rendering as a dead letter the "law of nature" exception to § 101 patentability has, apparently unwittingly, rendered § 102 a dead letter for certain types of...