In recent years, inventors, the U.S. Patent and Trademark Office (USPTO) and the courts have struggled with defining the boundaries of statutory subject matter, that is, what is patentable under §101 of the Patent Act. While an easy definition remains elusive, the patent community decries the current state of uncertainty: Advocates argue that the patent system has run amok and that the USPTO is approving weak patents whose existence drives up the cost for the development of new technologies and erodes public confidence in the patent system, while patent holders believe that courts have invalidated too many software-related patents and offered little guidance about the metes and bounds of patentability, thereby stifling real innovation. Meanwhile, patents remain a valuable commodity. Technology companies involved in smartphones, tablet computers, videogames, and Internet portals have bolstered their patent portfolios for defensive purposes and have also brought a number of high-profile infringement suits against competitors and upstarts.

In a sharp dissent to the majority opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), Judge Haldane Mayer highlighted three of the thorniest issues in patent law: (1) the continued viability of business method patents; (2) what constitutes sufficient physical transformation or machine-implementation to render a process patentable; and (3) the extent to which computer software and computer-implemented processes constitute statutory subject matter. While the first issue was addressed by the Supreme Court’s own Bilski opinion, all three issues continue to be hotly debated, most notably in a string of recent Federal Circuit decisions that have grappled with the patentability of certain software-related patents.

Section 101, Generally

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