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Bilski v. Kappos (Bilski II) empowered the lower courts to deploy patent eligibility as a doctrinal tool for policing claim scope. Because Bilski II leaves the test for patent eligibility largely undefined, the lower courts and PTO, in particular the Federal Circuit, could actively invoke the doctrine as a “wildcard” to invalidate patent claims deemed unduly broad, or otherwise “unworthy” by the court. Judge Rader made a similar observation recently with respect to the Lilly written description requirement, another doctrine of patentability for which the criteria for compliance remains largely undefined. However, early indications suggest that the Federal Circuit and PTO are disinclined to invoke patent eligibility as a front-line doctrinal tool for policing claim scope. There are already more appropriate doctrinal tools for policing claim scope, most particularly the enablement requirement, but increasingly in recent years the written description requirement. In most cases, these doctrines will be the more appropriate vehicle for guarding against overly expansive claiming of inventions. That said, some situations might very well warrant the use of patent eligibility, particularly to police against claims drafted so broadly as to encompass mental thoughts, mere analysis or manipulation of data, or other processes too far removed from what one would generally characterize as “technology.”

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IP Theory