This month we highlight three papers exploring research related to the Federal Circuit.
- Eligible Subject Matter at the Patent Office: An Empirical Study of the Influence of Alice on Patent Examiners and Patent Applicants by Professors Jay P. Kesan and Runhua Wang
- Law, Fact, and Patent Validity by Professor Paul R. Gugliuzza
- Year in Review: The Federal Circuit’s 2019 Government Contract Law Decisions by Nathaniel Castellano
Eligible Subject Matter at the Patent Office: An Empirical Study of the Influence of Alice on Patent Examiners and Patent Applicants
In their paper, Professors Kesan and Wang analyze the impact of the Alice decision on patent prosecution. They find that Alice has increased uncertainty. In addition, it has caused some applicants to file fewer patents. They conclude that since the Federal Circuit has failed to mitigate uncertainty:
“Given the current eligibility jurisprudence of the Federal Circuit and the reluctance of the Supreme Court to consider eligibility cases, our empirical study of the nature and extent of the uncertainties at the PTO caused by Alice concludes that legislation by Congress is the best hope to bring more certainty to this area of patent law.”
This paper argues that all questions of patent validity are mixed questions of law and fact. Professor Gugliuzza argues that
“[t]his approach would greatly simplify Federal Circuit doctrine, which currently treats some validity issues as questions of law, others as questions of fact, and still others as questions of law based on underlying facts.”
Further, he argues this approach would make it easier for practitioners to advise their clients.
Nathaniel Castellano’s paper identifies the most important government contract decisions in 2019. For example, the paper discusses the implications of Raytheon Co. v. Secretary of Defense and Bechtel National, Inc. v. United States in detail. Castellano argues that these decisions are vital tools for procurement lawyers.