The Sum of the Parts is Greater Than the Whole: Why Courts Determining Subject Matter Eligibility Should Analyze the Patent-Eligible and Unpatentable Portions of the Claim Separately Instead of Treating the Claim as a Whole

For years, uncertainty has plagued the patent world regarding how to determine if claims are patent eligible. Recent Supreme Court decisions addressing patent eligibility, while resolving the eligibility of the claims before the Court, have not provided a general methodology for lower courts and the Patent and Trademark Office to follow. This note proposes a general method of analysis to determine patent eligibility. First, rather than treat the claim as a whole, the court or examiner should divide a claim into unpatentable and patent-eligible portions. Then the court or examiner should conduct a three-factor analysis to determine if the claim is patent eligible. The proposed three-factor analysis balances (1) the dependency of the invention on the patent-eligible portion of the claim for utility; (2) the amount of preemption of the unpatentable portion of the claim; and (3) the novelty/nonobviousness of the patent-eligible portion of the claim. Analyzing the patent-eligible and unpatentable portions of a claim separately, and disregarding the Court’s admonitions to treat the claim as a whole, allow for greater insight into patent eligibility.