Patent-Eligible Subject Matter

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
News & Analysis as of

USPTO Issues Memorandum Regarding Enfish and TLI

On the heels of the Federal Circuit handing down two subject matter eligibility decisions regarding software, the U.S. Patent and Trademark Office has published a memo to its examining corps regarding these cases. On May 12,...more

The Recent PTO Guidance on Subject Matter Eligibility: Lessons

A few years ago, former PTO Solicitor General Nancy Linck arose from the audience at the BIO International Conference to provide her thoughts on how the Office had responded to the Supreme Court's decisions in Mayo v....more

Federal Circuit Finds Software-Related Claims Patent Eligible in Enfish, LLC v. Microsoft Corp.

On May 12, 2016, the United States Court of Appeals for the Federal Circuit addressed the patent eligibility of software in Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016), concluding that the claimed...more

Abstract Ideas and the USPTO: Examiner Guidance Post Enfish and TLI

On May 19, 2016, the U.S. Patent and Trademark Office issued a memorandum containing a summary of two recent Federal Circuit decisions along with a directive for how patent examiners should apply the holdings of the...more

Abstract Idea Exception Rules the Day in TLI Communications

The Court of Appeals for the Federal Circuity (CAFC) has been busy on the patent eligibility front this month. After the recent Enfish decision, the CAFC handed down TLI Communications LLC v. AC Automotive, LLC the very next...more

Hope For Software Patents In The Post-Alice Landscape

The courts have long been attempting to establish an appropriate framework with which to handle software-based inventions. Even before the Supreme Court decision in Alice Corp. v. CLS Bank International numerous tests have...more

In re TLI Communications LLC Patent Litigation (Fed. Cir. 2016)

This case is notable mainly because it is the first Federal Circuit decision to distinguish itself from Enfish LLC v. Microsoft Corp., and also because it is another reminder that the wall between patentable subject matter,...more

USPTO Memo Updates Examiner Guidance On Subject Matter Eligibility In View Of Enfish

On May 19, 2016, just weeks after its May 2016 memorandum to examiners providing guidance on subject matter eligibility under § 101, the USPTO issued a new memo updating its guidance to examiners in view of the Federal...more

UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Life Sciences

The United States Patent And Trademark Office (USPTO) issued a memorandum on May 4, 2016 (May 2016 Memo) to the Patent Examining Corps to provide further Examiner instructions relating to subject matter eligibility under 35...more

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 5)

Part V. The Fictional Mental Steps Doctrine Does Not Apply To Programmed General Purpose Computers - The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented...more

USPTO 101 Guidance: Microneedles Versus Prosthetic Devices

When I first wrote about the new natural products Subject Matter Eligibility Examples issued by the USPTO on May 4, 2016, I noted a puzzling difference between the treatment of a claim reciting a vaccine coated on a...more

Not All Software Claims are Abstract Ideas Under Alice

On May 9, Mercury navigated its way between the earth and the sun (a “transit “in astronomical terms), an event that will not occur again until 2019. The Federal Circuit in Enfish, LLC v. Microsoft Corp (2015-1244) provided a...more

USPTO Memo re Enfish v. Microsoft

This is an update to my recent article about the Federal Circuit’s decision in Enfish v. Microsoft. In a memo to the Patent Examining Corps dated May 19, 2016, Deputy Commissioner Robert Bahr said that the Enfish...more

Patentable subject matter: Inventive test for assessing substance of an invention

In Australia, one requisite for patentability is patent-eligible subject matter. This area has been in a state of flux lately, with one area of focus being computer implemented methods and business innovations....more

News of Note in IP

Each week, Sheppard Mullin brings you News of Note in IP: The latest news in the IP-related fields of technology, privacy, fashion, advertising, music, and social media, curated by our IP team. Here are some of the stories...more

Federal Circuit Limits Applicability of “Abstract Idea” to Claims Directed to “Improvement to Computer Functionality Itself”

The Federal Circuit has issued a decision in Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016) reversing (in-part) a district court decision and, instead, holding that claims directed to...more

In re Certain Activity Tracking Devices, Systems, and Components Thereof

Pepys (17th century) recorded his sleep patterns, so wearable devices that record sleep patterns unpatentable? On April 27, 2016, the U.S. International Trade Commission (ITC) issued an Order indicating that two patents...more

A Spring Thaw in the Availability of Patents for Software Inventions?

Patent lawyers, strategists, entrepreneurs and investors in software and Internet enterprises are acutely aware of “the Alice problem.” The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International caused a chill...more

Light in the Alice Tunnel: Software Claims Found Patentable

On May 12, the Court of Appeals for the Federal Circuit in Enfish, LLC v. Microsoft Corporation provided much needed guidance for the patent community in finding that software claims were patentable subject matter under...more

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 4)

Part IV. The Continued Application Of Mental Steps To Software Inventions - Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority...more

Motion To Dismiss Is Granted Due To Unpatentable Subject Matter Of The Patent-In-Suit

The patent-in-suit is titled "Method and System for Operating Applications for Remote Terminal Devices." Defendant challenged the patentability of the patent-in-suit pursuant to section 101 and Alice. ...more

Federal Circuit Holds District Court Abstractness Analysis Too Abstract for Alice under 35 USC § 101

Clients in the software space now have stronger arguments for subject matter eligibility, following the Federal Circuit decision in Enfish LLC v. Microsoft Corp. (May 12, 2016). The decision also touches on novelty,...more

Latest Post-Alice Guidance from the Federal Circuit

On Thursday, May 12, 2016, the Federal Circuit reversed a lower court’s finding of invalidity under 35 U.S.C. § 101, as an unpatentable abstract idea, of a software patent concerning a “self-referential” database in Enfish v....more

The “teacher’s PET” of radionuclides – patents directed to Fluorine-18

This is the second in a series of articles looking at the hot topic of the patenting of radiopharmaceuticals. Fluorine-18 (18F), a radioactive isotope of fluorine, is the most common positron-emitting radioisotope used in...more

How Federal Circuit Provides New Hope for Computer and Software-based Patents in Enfish, LLC v. Microsoft Corporation

In just its second opinion upholding claims under Alice v. CLS Bank, the Federal Circuit has interpreted Alice in a manner that could save a “substantial class” of inventions from the strikingly-high invalidity rate under the...more

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