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« CVC Files Reply to ToolGen's Opposition to CVC Preliminary Motion No. 3 | Main | Jennewein Biotechnologie GmbH v. International Trade Commission (Fed. Cir. 2021) »

October 05, 2021


I see that the corresponding patent application at the EPO, EP-A-2774098, is on appeal from a finding that the claim is old and obvious relative to a single earlier WO publication, which is the single category X reference on the International Search Report in the USPTO file. One would have thought that Applicant might by now have got around to presenting to their home Patent Office a claim with at least some novelty (never mind an "inventive concept"). Meanwhile, I note that the Federal Circuit accepts what Applicant announces as the inventive concept boasted in the application as filed as the "inventive concept" relevant to eligibility. So now I understand: the low hurdle inventive concept enquiry under 101 has nothing to do with the 103 enquiry into patentability. So, do I see it right, eligibility in the USA is increasingly similar to the ultra-low hurdle "technical character" EPO test of eligibility?

Dr. Borella,

Your tri-prong 'answer' to the two-prong test as one avenue of meeting the Court-made eligibility nose of wax appears to be in forming into shape.

Do you also do plastic surgery?

The only thing missing from the analysis is that the novelty of the technical solution must be viewed as if any underlying novel scientific discovery of the applicant was in the prior art (recall the "as if" language from Flook). Otherwise, there is no "inventive concept" in the applicaton of that discovery, but only from applying (with specificity) the ineligible discovery in a technical solution to some identified problem.


"I note that the Federal Circuit accepts what Applicant announces as the inventive concept boasted in the application as filed as the "inventive concept" relevant to eligibility."

This is in part due to the decision being made on a 12(c) motion, where facts are construed in favor of the non-movant. Later on this can be challenged.



Only in my spare time.



That notion is captured in the "technical" requirement, as in the discovery of a scientific principle is not a technical advance. Or one could say that such a discovery is not novel. I've peeled that onion in a couple of previous articles. The US more or less follows the principle but the courts have never explicitly stated as such.


Dr. Borella,

I would be interested in a conversation between yourself and Prof. Lefstin and Sherry Knowles when it comes to Discoveries (in and of themselves) properly being patent eligible subject matter under the words of Congress at 35 USC 101.

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