No Patent Attorney in Their Right Mind: How Jepson Claims Clarify Subject Matter Eligibility Post-Mayo

Patent practitioners have gradually shelved Jepson claims for four decades. In those four decades, Supreme Court patent subject matter eligibility jurisprudence has taken a roller-coaster ride from an ancient point-of-novelty approach through the days of Diamond v. Diehr and back to a modernized arguably point-of-novelty-focused approach again in Mayo and Alice. In the absence of congressional action, the Federal Circuit has been left to deal with the aftermath. The inventive landscape—particularly with regard to biotech and software—is shifting fast, and our patent scheme is struggling to keep up. In the case of software inventions, the Federal Circuit has largely looked to how these inventions improve on the prior art. As Judge Lourie noted in Ariosa, Jepson claims are purpose-built to claim improvement inventions. This Note argues that the Jepson claim format will facilitate prosecution and enforcement by clarifying both steps of the Mayo/Alice test and better position patentees for a continuing shift toward central claiming. The USPTO wants Jepson claims and has the authority to demand them. Patent practitioners should not wait—they should start drafting Jepson claims again.