News & Analysis as of

Computer-Related Inventions United States Patent and Trademark Office Software Patents

Buckingham, Doolittle & Burroughs, LLC

Dear Patenticity: Worried About Alice

Dear Patenticity, My startup is working on what we believe is a game-changing software application and we are concerned about others taking our idea and fielding a competitive product based on our work. We would like to...more

Kilpatrick

Will There Be a Legislative Push to Reform Patent Eligibility Requirements During the Biden Administration?

Kilpatrick on

On March 5, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property, Senators Tillis (R-NC), Hirono (D-HI), Cotton (R-AR) and Coons (D-DE), sent a letter to the USPTO’s...more

Foley & Lardner LLP

Patenting Software in AI, VR, and 3D Printing

Foley & Lardner LLP on

With rapid changes, pressure to innovate, and acceleration of implementation of advanced technology across all stages of the supply chain over the past year, there are important intellectual property (IP) considerations that...more

McDonnell Boehnen Hulbert & Berghoff LLP

On the Patent Eligibility of Graphical User Interfaces: Part I

The evolution of graphical user interfaces parallels the evolution of computing technology itself.  As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Update on Patent Subject Matter Eligibility & Abstract Ideas

Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S....more

Mintz - Intellectual Property Viewpoints

Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology

Artificial Intelligence (AI) inventions have aided development in nearly every industry, but perhaps none more so than synthetic biology. For synthetic biology researchers, AI has developed into a vital tool to create cutting...more

Fish & Richardson

Patenting Software: A Case Study in Overcoming Alice

Fish & Richardson on

In 2014, the United States Supreme Court handed down its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, which significantly altered the patentability of software, business methods,...more

Knobbe Martens

Big Picture on Software Patent Eligibility: The Forces at Work

Knobbe Martens on

Much of the modern economy is driven by software development. Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and...more

Sunstein LLP

January 2019 IP Update - New Guidelines Proposed for Functional Claiming in Computer-Related Inventions

Sunstein LLP on

In a second notice of proposed rulemaking (besides the one for patent eligibility) announced January 4, 2019 and published in the Federal Register on January 7, 2019, the Patent and Trademark Office has proposed guidelines...more

Chambliss, Bahner & Stophel, P.C.

Software Patents Get a Lifeline

Recent USPTO Guidance Offers Insight for Software Patent Eligibility - By now most of you have probably heard that "software patents" and "software patent applications" have had a rough time for the past 4 ½ years. Some of...more

K&L Gates LLP

USPTO Clarifies Alice/Mayo Step 2A With New Patent Subject-Matter Eligibility Guidance

K&L Gates LLP on

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with the USPTO’s inconsistent interpretation of patent subject-matter...more

Bradley Arant Boult Cummings LLP

Federal Circuit Affirms Rejection of Broad, Computer-Based Claims

As we’ve covered in other summaries, the Federal Circuit continues to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - October 2018: How To Do The Two-Step In The United States: The Current State of...

In the wake of the Supreme Court’s Mayo and Alice decisions, uncertainty has surrounded what inventions are patent eligible in the United States. In Mayo and Alice, the Supreme Court developed a two-step test to determine...more

Blank Rome LLP

Out of Wonderland from Diehr to Aatrix: Three Steps to Overcoming 101 Rejections – Part II

Blank Rome LLP on

This second part of a two-part article discusses four decisions by the U.S. Court of Appeals for the Federal Circuit finding subject matter eligibility under step 2 of Alice Corporation Pty. Ltd. v. CLS Bank International, et...more

Ward and Smith, P.A.

The Blockchain Revolution: Time to Ramp Up Your Software Patenting Effort?

Ward and Smith, P.A. on

As you read this article, hundreds of startups and other organizations are working on blockchain applications in such areas as energy trading, data storage trading, peer-to-peer lending, and verifying professional or other...more

Blank Rome LLP

Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections

Blank Rome LLP on

Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not...more

Snell & Wilmer

Intellectual Property Misconceptions Debunked

Snell & Wilmer on

Many people have misperceptions about what intellectual property (IP) protects, and some common IP misconceptions are debunked below. (1) Ideas Cannot Be Patented. Only inventions can be patented. The legal...more

Fox Rothschild LLP

One Step Forward, Two Steps Back For Software Patents At The Federal Circuit

Fox Rothschild LLP on

In the past year, several Federal Circuit decisions defined situations in which software inventions could be eligible for patenting in the United States. However, two recent Federal Circuit decisions show that the path for...more

Fenwick & West LLP

Exploring the Legal Contours of Patent Subject Matter Eligibility

Fenwick & West LLP on

I'd like to go back to some first principles and history. Article 1, Section 8 of the Constitution neatly divided the promotion of, on the one hand: Science, the fields of knowledge and ideas, by securing exclusive...more

Fenwick & West LLP

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

Fenwick & West LLP on

On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

Bracewell LLP

Patentee's Day of Thanks Comes in Early November: Assessment of the USPTO's Recent Memorandum Regarding Patent Eligibility for...

Bracewell LLP on

A recent U.S. Patent & Trademark Office (USPTO) memorandum to the Patent Examining Corps, in combination with precedential cases from the Federal Circuit, provides positive guidance to owners of software patents and patent...more

Fenwick & West LLP

AliceStorm Update for October 2016

Fenwick & West LLP on

The Federal Circuit's recent decision in McRO has been interpreted by many in the patent community as a further signal that the so-called "pendulum" is swinging back to a more favorable position for patentees. There is some...more

Fenwick & West LLP

More Lessons From McRo

Fenwick & West LLP on

My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit is In Sync with Patent’s Validity Under Section 101

The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract...more

Fenwick & West LLP

McRo: Preemption Matters After All

Fenwick & West LLP on

The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D...more

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