Recent Supreme Court and Federal Circuit cases have significantly unsettled the law regarding patentable subject matter through a series of conflicting opinions regarding everything from business methods to biotechnology, from computer graphics software to medical diagnostics. These decisions only further confound serious problems in existing legal theories of claim construction (understanding what patent claims means) and obviousness (deciding whether an invention is sufficiently new and inventive to merit a patent). The increased uncertainty in the law could have deleterious effects on innovation, as companies and entrepreneurs may forgo developing new technologies and businesses if they believe that patent protection may not be available to protect their investments.

Critics of these recent changes call into question the Supreme Court’s wisdom in its recent decisions and feel that there is a lack of understanding about how best to approach these questions. Check here frequently for commentary calling for a more principled approach to the questions of patentable subject matter and related patent issues.

Robert R. Sachs, Partner, Fenwick & West

Mr. Sachs is an intellectual property partner in Fenwick's San Francisco office and his practice concentrates on strategic patent counseling and prosecution for software technologies. Mr. Sachs has extensive experience in developing patent portfolios for companies of all sizes, from startups to multinationals. One of Mr. Sachs’ areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection and particularly whether software- and life sciences-related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Mr. Sachs instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect.

Stuart P. Meyer, Partner, Fenwick & West

Mr. Meyer counsels clients on intellectual property matters, including technology-based litigation, performing strategic intellectual property planning and intellectual property audits for technology companies, and securing patent, copyright, and other intellectual property rights. His client portfolio includes a wide variety of technology companies, from small start-ups to multinational public companies. Mr. Meyer has also represented other organizations prominent in technology, such as the Massachusetts Institute of Technology, for which he served as counsel in litigation involving the so-called RSA encryption patent, considered to be fundamental to data privacy. Stuart received his J.D. from Yale Law School, his M.S. degree in electrical engineering and computer science from Princeton University, and his B.S. degree in electrical engineering from Carnegie Mellon University.