Skip to content


Innovation and the Evolution of Patentable Subject Matter

September 27, 2013

8:45 A.M. Registration

9:15 A.M. - 3:00 P.M.

UC Davis School of Law

From biotechnology to business methods to software, the expansion of the definition of patentable subject matter over the last thirty years has had an important impact on innovation. Consensus has it that the biotech industry may not have developed at all, or remained embryonic, without the newly allowed patentability of genetic materials. But in recent years, the Supreme Court and the Court of Appeals for the Federal Circuit have signaled important doubts and issued unclear rulings on these matters. The Supreme Court failed to provide clear indications about the future of business methods (including financial methods) patenting in Bilski (2010) or about medical diagnostic systems in Prometheus (2012).

The Supreme Court recently reconsidered genetic patenting following a petition by a consortium of medical researchers and health advocates, ruling that, while newly created DNA sequences are eligible for patenting, isolated segments of naturally occurring DNA are not. The Federal Circuit’s recent en banc review in CLS Bank v. Alice Corp (May 2013), resulted in five separate opinions and failed to clarify the test for software patent-eligibility.

Together with possible push back against some expansive interpretations of patentability doctrine, we are also witnessing the emergence of new definitions of invention (especially information-based inventions like business and financial methods). No matter where one stands on the debates over patentable subject matter, it is clear that these cases are pushing the limits of traditional notions of inventions that emerged during the industrial revolution and point to the emergence of new definitions of invention for the information age, making these developments crucial to both legal scholars and entrepreneurs in some of today’s most innovative and economically vital industries.

MCLE credits available

About the Fenwick & West TESLaw Lecture Series

The TESLaw Lecture Series, sponsored by Fenwick & West, is a five-year program of annual symposiums focused on providing practitioners, academics, and students with the knowledge base to successfully address the challenges that are inherent to the computing, digital communications, social media, "clean" technology, and life sciences and biotechnology markets of the 21st century.

Fenwick & West LLP

Established in the heart of Silicon Valley in 1972, Fenwick & West provides comprehensive legal services to technology and life-sciences clients of national and international prominence. A full-service law firm, Fenwick & West has leading practices in mergers and acquisitions, public securities offerings, venture capital financing, intellectual property prosecution and counseling, intellectual property litigation, securities litigation, tax planning, and tax litigation. More than 275 attorneys work with a wide range of clients, from start-ups to FORTUNE 50 companies, from the firm's offices in Mountain View, San Francisco, Seattle, and Boise.