Patent-Eligible Subject Matter Patents

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 -
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USPTO Holds Forum on Subject Matter Eligibility -- Part IV

On May 9, the U.S. Patent and Trademark Office held a four-hour long forum to receive public feedback on the Myriad-Mayo Guidance, which was issued by the Office on March 4. According to the Office's Guidance webpage, the...more

Docs @ BIO: The Rest of the Story - Bloomberg BNA Hosts Panel on Subject Matter Eligibility

Last month at the BIO convention, Randy Kubetin, Managing Editor of Bloomberg BNA's Life Sciences Law & Industry Report moderated a panel entitled "Patent Eligibility from the Trenches: Practical Implications of the Supreme...more

Putting Structure and Function Into Context for USPTO Patent Subject Matter Eligibility Guidance

The USPTO’s ”Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products” has been criticized for requiring a product to be markedly different in...more

USPTO Issues Guidance on Patentability of “Nature”-Related Patent Claims

The U.S. Supreme Court has recently taken a keen interest in whether certain subject matter is eligible to be patented under U.S. law1. In June 2013, the Supreme Court held in Myriad2 that patents on naturally-occurring DNA...more

An Exchange with Michael Risch: Do the Facts Matter in Patent Eligibility?

In my recent analysis of the Alice decision, I wrote the following: In Benson, the Court believed (wrongly it turned about, but that’s beside the point) that the claims covered the basic algorithm for converting...more

Supreme Court Invalidates Business Method Patents: What you need to know about Alice Corp. v. CLS Bank International

The patent claims at issue required using a computer system as a third-party intermediary to facilitate the exchange of financial obligations between two parties to mitigate settlement risk. The patents included method,...more

USPTO Issues “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS...

On June 25, 2014, the USPTO issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.”...more

Dolly Was a "Natural Phenomenon"

In re Roslin Institute (Edinburgh) - Addressing patent eligible subject matter under 35 U.S.C. § 101, the U.S. Court of Appeals for the Federal Circuit affirmed the decision of the U.S. Patent and Trademark Office...more

Docs @ BIO: USPTO Provides Update on Myriad-Mayo Guidance

At last week's BIO International Convention in San Diego, Andrew Hirshfeld, USPTO Deputy Commissioner for Patent Examination Policy, and June Cohan, a Legal Advisor with the USPTO's Office of Patent Legal Administration, took...more

Alice v CLS Bank: An Australian Perspective

Over the decades, the use of patents to protect “software” or “computer implemented” inventions has been the subject of much debate: both on the philosophical question of whether such inventions should be patentable, and on...more

IP Buzz - June 2014

In this issue: - Patent Reform: It's Alive! - Nautilus: New Test, Same Application? - Supreme Court Opens Door to Food and Beverage Label Challenges Under Lanham Act - Alice Corp. v. CLS Bank:...more

Supreme Court Aiding Fight against Patent Trolls: Alice, Nautilus, Limelight, Octane Fitness and Highmark

The Supreme Court may be making up for where Congress has left off. Legislation designed to curb abuse from patent assertion entities, or so-called patent trolls, has been shelved indefinitely. The legislation passed the...more

Bernstein Shur Business and Commercial Litigation Newsletter #41

We are pleased to present the 41st edition of the Bernstein Shur Business and Commercial Litigation Newsletter. This month, we highlight recent Supreme Court cases that address securities class actions, copyright law, and...more

Alice Corp. v. CLS Bank: Another Unpatentable Business Method Patent

On June 19, 2014, the Supreme Court unanimously decided Alice Corp. v. CLS Bank Int'l. and held that the claimed computer-implemented business method did not recite patent-eligible subject matter. The Alice decision examines...more

Docs @ BIO: BNA Issues Report on PTO's Patent Eligibility Guidance

Sounding an appropriately alarmist note, the Bureau of National Affairs (BNA) Life Sciences Law and Industry Report issues the results of a study on how the U.S. Patent and Trademark Office is administering its March 4, 2014...more

Alice And The Abstract Idea

On June 19, 2014 the U.S. Supreme Court in Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. _____ (2014) (Alice) struck down method claims related to mitigating “settlement risk” in financial transactions as...more

Alice Corp.—Through the Looking Glass Darkly

Continuing its recent series of patent law decisions, the Supreme Court issued its opinion in Alice Corp. v. CLS Bank International on June 19, 2014. The question before the Court was whether Alice Corp.’s patent claims,...more

USPTO Asks for Patent Subject Matter Eligibility Comments by July 31, 2014

In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014 on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank...more

USPTO Issues Preliminary Examination Instructions in Light of Alice Corp.

In Alice Corporation Pty. Ltd. v. CLS Bank International, el al., Case No. 13-298 (decided June 19, 2014) (“Alice Corp.”), the Supreme Court unanimously held that the subject patent claims are not patent-eligible under 35...more

Supreme Court Provides Guidance on the Subject Matter Eligibility of Computer-Implemented Inventions

On June 19, 2014, the Supreme Court invalidated claims directed to methods and computer systems for using an intermediary to reduce the settlement risk in certain financial transactions. The claims were invalidated on the...more

Recent Developments In Information Technology Law – Second Quarter 2014

U.S. SUPREME COURT - Patents - As reported at U.S., No. 13-298, on June 19, 2014, a unanimous Supreme Court ruled that the method, system and readable media claims of a patent were drawn to patent ineligible...more

Software and Trade Secrets: Rethinking IP Strategies after CLS v. Alice

Historically, the patent system has provided broad protections to software innovations. In the past, software patent holders could prevent competitor infringement without much need for a comprehensive disclosure of the...more

USPTO Extends Deadline for Providing Feedback on Myriad-Mayo Guidance

As we reported earlier this week, the period for submitting written comments to the U.S. Patent and Trademark Office regarding the Office's Myriad-Mayo guidance memorandum has been extended to July 31, 2014. The Office...more

Supreme Court Corner - Q2 2014

Octane Fitness, LLC v. Icon Health & Fitness, Inc. - Patent: Decided: April 29, 2014 - Holding: A patent case is “exceptional” under 35 U.S.C. § 285 when it “stands out from others with respect to the...more

Abstract idea not converted to patentable invention by performance on a computer; Must be applied in an inventive manner

In a unanimous decision on June 19, 2014 authored by Justice Thomas, the Supreme Court in Alice Corp. v. CLS Bank Intl. held that an abstract idea did not become patent-eligible simply by performing that idea on a computer....more

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