Patent-Eligible Subject Matter United States Patent and Trademark Office

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

Federal Circuit Reverses Unreasonable PTAB Claim Construction, Upholds Idle Free Standard for Motions to Amend

The Federal Circuit decision in Microsoft Corp. v. Proxyconn, Inc., addressed several important issues relating to post-grant patent trials conducted by the USPTO Patent Trial and Appeal Board (PTAB), including the PTAB’s...more

The One Year Anniversary: The Aftermath of #AliceStorm

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Hope for Computer-Related Patents

“Let's be clear: if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents...more

Interim Guidance Status Check

As of Tuesday, June 16th, we have been living with the U.S. Patent and Trademark Office's "2014 Interim Guidance on Patent Subject Matter Eligibility" ("Guidance") for six months. Although the USPTO subsequently issued some...more

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

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

Conventional Use of Computer Not Enough to Overcome Alice - Westlake Services, LLC v. Credit Acceptance Corp.; Regions Financial...

In two separate decisions involving an § 101 analysis of subject-matter eligibility of business methods patents (CBMs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found that the...more

Specific Application Will Not Avoid Ineligibility Unless Required by the Claims - Int’l Securities Exchange LLC v. Chicago Board...

Addressing the patent eligibility of claims from two challenged covered business method patents (CBMs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found the challenged claims to be...more

Corporate E-Note - April 2015

In This Issue: - State Regulatory Boards Are Open to Antitrust Liability, Says the Supreme Court - USPTO Issues Patent Eligibility Guidelines…So Now What? - Bond Financing: The Best-Kept Secret For...more

Waiting on Sequenom

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

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

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

Protecting food industry innovations as the scope of patentable subject matter narrows

Strong intellectual property increases the value of a company. Copyrights, trademarks, patents, and trade secrets are some avenues to protect intellectual property, but understanding when they’re available and understanding...more

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

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

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

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

Tips for Developing a Cost-Effective Foreign Patent Strategy

According to a recent survey of over 100 companies and universities, nearly 93% who filed patent families in 2013 filed at least some of those patent families internationally. While obtaining patent protection abroad is...more

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

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

USPTO Holds Forum on Interim Guidance -- Part III

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

USPTO Holds Forum on Interim Guidance -- Part II

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

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

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

Are U.S. Law Idiosyncrasies Destroying Your PCT Applications?

Suppose a business’s patent strategy makes studied use of the Patent Cooperation Treaty application: draft one master application to serve as the basis for filing throughout the world. Coverage is required in the United...more

Limitations Drawn from Specification Not Enough to Overcome § 101 - Fidelity National Information Services, Inc. v. CheckFree...

Addressing subject matter eligibility of four covered business method patents, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found that four patents were invalid in light of Alice Corp.,...more

Highlights From USPTO's Abstract Idea Examples

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

Navigating the USPTO Subject Matter Eligibility Guidance For Computer-related Inventions

On 16 December 2014, the USPTO issued revised subject matter eligibility Guidance. On 27 January 2015, the USPTO issued “abstract idea” computer-related invention examples of eligible and ineligible claims. The following...more

USPTO Provides Example Patent Eligible Software Claims

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

USPTO Holds Forum on Interim Guidance -- Part I

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

USPTO Issues Post-Alice Abstract Idea Examples

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

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