Never Mind The Gap at the Federal Circuit

CLS Bank was going to do for computer–implemented inventions what Bilski was going to do for business method patents. The Federal Circuit took the case en banc so that the entirety of the court could craft a ruling about when and under what circumstances adding a computer to an abstract method or system patent claim would suffice to render that claim patentable.

Like Bilski, the seven opinions of ten judges over 140 pages of CLS Bank have left patentees, accused infringers, patent lawyers, patent litigators, general counsel, district judges, and the Patent Office in a state of greater uncertainty, not greater certainty. Enough judges agree on the result to let that stand; but there is no majority, no clear rule, and nowhere to turn other than the Supreme Court, if the losing party has the appetite to take the fight there. The luck of the draw—as in the composition of the three–judge panel that will hear your appeal—may be your only clue to whether your appeal on the issue of patentable subject matter of computer–implemented patents is a likely winner or loser.

In a one–page memo issued on May 13, the Patent Office concluded that in light of CLS Bank it would make “no change in examination procedure for evaluating subject matter eligibility.” So it’s heads down and back to work, none the wiser for the experience of CLS Bank.