News & Analysis as of

Patent-Eligible Subject Matter › Interim Guidance

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 -
Mintz

UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Abstract Ideas

Mintz on

All patent applications submitted to the United States Patent And Trademark Office (USPTO) are examined subject to the requirements set forth in 35 U.S.C. §§101, 102, 103, 112, which respectively address patent eligibility,...more

Morrison & Foerster LLP

USPTO Issues New Subject Matter Eligibility Examples for Life Sciences

Morrison & Foerster LLP on

The United States Patent and Trademark Office (USPTO) recently provided updated guidance regarding the patent eligibility of subject matter related to natural products. The updated guidance may be of interest to companies...more

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

Fenwick & West LLP on

In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

Foley & Lardner LLP

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

Foley & Lardner LLP on

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...more

Womble Bond Dickinson

Factual Findings for Arguing a Post-Alice 35 USC §101 Patent Ineligible Subject Matter Rejection

Womble Bond Dickinson on

During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC...more

Foley & Lardner LLP

Waiting on Sequenom

Foley & Lardner LLP on

As I write this there’s a voice in my head saying, “Be careful what you wish for!” but it has been five months since Sequenom was argued at the Federal Circuit, and the court has yet to issue its decision. In the meantime,...more

BakerHostetler

USPTO Urged to Revise Interim §101 Guidance to Require Examiners to Present a Proper Prima Facie Case Supported by Factual...

BakerHostetler on

As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). This Interim Guidance was...more

McDermott Will & Emery

USPTO Releases Examples for Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

McDermott Will & Emery on

On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014. ...more

Fenwick & West LLP

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 3)

Fenwick & West LLP on

Interim Guidance: Summaries of Patent Eligibility Cases - The Interim Guidance provides succinct summaries of various Supreme Court and Federal Circuit decisions. As explained by the Office at the January 21, 2015...more

Fenwick & West LLP

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 2)

Fenwick & West LLP on

The Preemption Requirement - Preemption is the core concern that drives the Court’s “exclusionary principle”. The Supreme Court in Alice stated...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Holds Forum on Interim Guidance -- Part II

McDonnell Boehnen Hulbert & Berghoff LLP on

In a forum held last month on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

Foley & Lardner LLP

Patenting Stem Cells in View of the USPTO’s New Interim Guidance

Foley & Lardner LLP on

Late last year, the USPTO issued its modified and revised 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Guidance) to assist patent examiners and the public in determining if a claim presented for...more

Pierce Atwood LLP

Highlights From USPTO's Abstract Idea Examples

Pierce Atwood LLP on

On January 27, 2015, the United States Patent and Trademark Office (USPTO) issued a set of examples for analyzing claims under the abstract idea exception to subject matter patent eligibility. The Abstract Idea Examples...more

Polsinelli

USPTO Provides Example Patent Eligible Software Claims

Polsinelli on

After the Alice decision last summer by the Supreme Court, a large number of business method and software patents have been invalidated or found unpatentable by federal courts and the Patent Office as being drawn to abstract...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Holds Forum on Interim Guidance -- Part I

McDonnell Boehnen Hulbert & Berghoff LLP on

In a forum held January 21 on the U.S. Patent and Trademark Office's Alexandria campus, Office representatives discussed the Interim Guidance on Patent Subject Matter Eligibility, which was released in December, and received...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Post-Alice Abstract Idea Examples

McDonnell Boehnen Hulbert & Berghoff LLP on

On January 27, the USPTO provided its promised set of examples of patent-eligible and patent-ineligible claims relating to the abstract idea exception to 35 U.S.C. § 101, in light of Alice Corp. v. CLS Bank. These examples...more

Baker Donelson

Some Patents May Survive Alice and Myriad

Baker Donelson on

Guidance published by the U.S. Patent and Trademark Office (USPTO) on December 16, 2014 indicates a slight softening in its position regarding patentable subject matter. The patent community has been hard hit in the last few...more

Pierce Atwood LLP

Lessons from the USPTO's Forum on Subject Matter Eligibility

Pierce Atwood LLP on

On January 21, 2015, the United States Patent and Trademark Office (USPTO) held a public forum (Eligibility Forum) to discuss recent developments in subject matter eligibility, particularly the USPTO’s 2014 Interim...more

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

Can Digital Healthcare Innovation Be Patented? Eligibility of Digital Healthcare Technologies Under the New USPTO Eligibility...

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

Digital healthcare, the confluence of digital technology with medical and other biological fields, has become an ever-increasing presence in our daily lives. Ideas that seemed nearly impossible just a few years ago (such as...more

Foley & Lardner LLP

Can Any DNA Claims Still Be Patented?

Foley & Lardner LLP on

In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC §...more

Foley & Lardner LLP

Five Things You Need to Know About the USPTO Interim Guidelines on 101

Foley & Lardner LLP on

The USPTO issued interim guidelines on 101 (“Interim Guidance”) on December 15, 2014. We summarized the Interim Guidance in this post, and now highlight five things practitioners and stakeholders need to know as they consider...more

McDermott Will & Emery

USPTO Releases Interim Examination Guidelines for Determining Patent Eligibility Under 35 U.S.C. § 101

McDermott Will & Emery on

2014 Interim Guidance on Patent Subject Matter Eligibility - On December 15, 2014, the U.S. Patent & Trademark Office (USPTO) released examination guidelines titled 2014 Interim Guidance on Patent Subject Matter...more

22 Results
 / 
View per page
Page: of 1

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up Log in
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide