Decisions provide further guidance regarding the subject matter eligibility of computer-based diagnostic methods
Decision highlights the need for applicants to focus on additional improvements to technology when drafting and prosecuting applications directed to computer-implemented diagnostics methods.
On March 25, 2021, the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that maintained the rejection of diagnostic method claims in a patent application owned by The Board of Trustees of Leland Stanford University (Stanford), providing further guidance regarding the subject matter eligibility of computer-based diagnostic methods.[1] In this case, the Court found that the claims were ineligible under 35 U.S.C. § 101 for being “drawn to abstract mathematical calculations and statistical modeling, and similar subject matter.”[2] This decision follows a recent decision issued by the Court last month regarding a related Stanford patent application directed to similar subject matter.[3] Together, these decisions illustrate the pitfalls that are currently being encountered by applicants seeking to obtain patent protection for computer-based diagnostic methods and systems. More importantly, they provide guidance regarding issues that applicants should consider when drafting applications and claiming subject matter in this area.