Each time the U.S. Supreme Court has addressed patent eligibility, the law surrounding what can and cannot be patented has become murkier. Most recently, the wake of the Supreme Court's Alice ruling has led to irreconcilable U.S. Federal Circuit Court of Appeals decisions. Furthermore, the U.S. Patent and Trademark Office has released a myriad of eligibility guidelines and updates that seek to establish uniformity and predictability, but, in reality, result in ambiguity and inconsistent application from patent examiners. This leaves patent attorneys in a difficult place when advising clients in the software space, as we can speak in likelihoods as to whether inventions are patent-eligible, but can rarely be certain.

Help might be on the way. During her confirmation hearings in October, Justice Amy Coney Barrett was asked whether "the Court should go back and clarify at least the method that they use to reach their opinion [on patent eligibility]." Justice Barrett responded that she could not "think of what particular cases you might be thinking of on patent eligibility," likely meaning that she is not familiar with patentability issues. She followed up by remarking as follows: "Without commenting on those cases, in any event, I think I would say that clarity in decision-making is always something that courts should strive for. And I know on the Seventh Circuit, we try—and I'm trying to be attuned to, in writing opinions—whether it gives good guidance to lower courts, and then to also those who are trying to order their conduct in compliance with the law. So, I think clarity is certainly a virtue in this context."

It is unclear if and when the Supreme Court will again take up patent eligibility. However, if they do so, given Justice Barrett's commitment to clarity, we can expect brighter lines to be drawn than we've seen in the past from Alice, Mayo, Myriad and Bilski. In the long term, practitioners and inventors in clouded technology spaces can likely look forward to clearer rules to guide their patent strategies.

In the short term, where a patent application is "stuck" with no recourse facing § 101 rejections, applicants might find value in delaying prosecution and refraining from abandoning their applications in hopes that we obtain future guidance from the Supreme Court. That is, whenever a new justice is seated on the Supreme Court (and we now have three added since the last look by the Court at § 101), there is a possibility that they will have a new take on murky issues such as eligibility.

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