It’s a case with a humble beginning, just three Red Line stops south of Loyola’s Corboy Law Center, in the United States District Court for the Northern District of Illinois. But this case also has the potential to effect major and much needed change in the realm of patent law. The Honorable John Z. Lee heard HP Inc. v. Berkheimer in 2016, and subsequently, the case worked its way through the appellate courts. The Supreme Court hasn’t yet decided if it will hear the case because for the last eleven months the Petition for Writ of Certiorari for Berkheimer was pending a submission of an amicus brief from the Solicitor General. The brief—which recommended that the Court deny the Berkheimer petition unless another case, Athena v. Mayo, is granted certiorari—was filed with the Court last week. This case could be one of the first patent subject matter eligibility cases to be heard by the Supreme Court in over five years—despite over 40 rejected petitions on the same issue. Subject matter eligibility matters to inventors, investors, and other patent stakeholders, because it directly impacts what does and does not receive a patent, and thus who does or doesn’t have the right to exclusively market and sell their invention as a reward for their creativity and ingenuity. However, the current test for patent subject matter eligibility, introduced in 2014, has been very difficult for the lower courts to administer. If the Supreme Court decides to grant certiorari for Berkheimer, it will have an opportunity to clarify the test. By more explicitly defining what can and cannot be patented, the Supreme Court, in theory, might better align the expectations of patent examiners, judges, and inventors, allowing the patent system to function more efficiently.
I will never forget the first time I heard it. It was in an information session hosted by my high school’s college counseling department. The college counselor was talking about finding the “right school for you” by evaluating criteria like school size and location. He suggested, for example, if we liked the big, midwestern feeling of the University of Michigan campus, that we also consider visiting the University of Iowa or Ohio State University. And then it happened. He stopped, and with a wry smile said, “oh I’m sorry, THE Ohio State University.” I didn’t end up attending OSU, as I chose the University of Wisconsin instead, but that memory resurfaced this summer after it was announced that OSU had decided to attempt to trademark the word “the.”
If you know you’re interested in exploring intellectual property (IP) law before even beginning your law school career, you probably have a specific set of interests, distinct from the “average” law student. Something has sparked your curiosity in IP. For me, working at the University of Wisconsin Madison’s technology transfer office, helping professors and university researchers apply for patents, sparked my interest in IP. Around the same time, I was completing a Certificate in Global Health and I became fascinated with the way the law can shape health outcomes in populations of people. For a long time, I thought I would have to choose: patents or public health.