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 Review | April 2016

Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

Will The Celsis Appeal Put An End To 101 Rejections Of Laboratory Method Claims?

On April 5, 2016, the Federal Circuit heard oral arguments in Rapid Litigation Mgmt. Ltd. v. CellzDirect Inc., where the U.S. District Court for the Northern District of Illinois held invalid claims directed to a “method of...more

Guest Post: Was the Deck Stacked? Federal Circuit Refuses to Rule on Scope of USPTO Patent Guidance

In an interesting case decided last month, the Federal Circuit ruled that it cannot address whether the U.S. Patent and Trademark Office's 2014 Interim Guidance on Patent Subject Matter Eligibility exceeds the scope of the...more

Sequenom Asks the Supreme Court to Clarify the Limits on Section 101

On March 21, 2016, Sequenom filed a writ of certiorari with the U.S. Supreme Court, asking the Court to provide clarification regarding the limits of 35 U.S.C §101 as it relates to patent eligibility of diagnostic tests....more

Square, Inc. v. Protegrity Corp. (PTAB 2016)

U.S. Patent to Database for Protecting Formula for Coca-Cola Found Invalid under CBM Review - On March 2, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business...more

Federal Circuit Won’t Review USPTO’s Alice Guidelines

On March 10, 2016, the Federal Circuit ruled that it cannot review the U.S. Patent and Trademark Office’s patent-eligibility guidelines to examiners on how to apply the Supreme Court’s Alice ruling. The appeals court held...more

Vehicle Intelligence v. Mercedes-Benz: Ineligibility as a Proxy for Lack of Enablement

The Federal Circuit has issued six decisions since December 1, 2015, all of course invalidating the patents in suit, four per curiam (Clear With Computers v. Altec Indus; Cloud Satchel v. Amazon.com; Wireless Media...more

New Examiner Training Materials on Patent Subject Matter Eligibility

In the wake of the Supreme Court’s Alice decision on patent subject matter eligibility, patent stakeholders have anticipated a reaction from the United States Patent and Trademark Office (USPTO) in regard to patent...more

Federal Circuit Review | February 2016

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more

USPTO “Forecloses” on Mortgage Processing Patent under Alice

Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board. According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to...more

The Genetics of Gender Discrimination in Date Palm Patenting

You’re driving south out of Indio along the Grapefruit Boulevard towards Thermal and Mecca because their names sound promising.  A parched desert plain extends to your left, leading up to the austere ridgelines of Joshua Tree...more

Regarding Beauregarding

A Beauregard claim is a claim to a computer program written as a claim to an article of manufacture: a computer-readable medium on which instructions are encoded for carrying out a process. Beauregard appealed the rejection...more

So you want to protect your software: Tactics, options, and considerations post-Alice

Since its first development, intellectual property law has struggled with how to best protect software. Initially, developers could only choose between copyright or trade secret protection to protect their innovative...more

Federal Circuit Review | January 2016

The Federal Circuit Will Review Appeals from Inter Partes Review Proceedings Under the “Substantial Evidence” Standard - In Merck & Cie v. Gnosis S.p.A., Appeal No. 2014-1779, the Federal Circuit affirmed a PTAB IPR...more

BioPharma Patents: Quick Tips & News - January 2016

Subject matter eligibility and “laws of nature.” As reported in our July 2015 newsletter, the Federal Circuit invalidated claims to a method of diagnosing fetal abnormalities without amniocentesis. This precedent—if it...more

Q&A from Webinar on Top Patent Law Stories of 2015

Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015." The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories. The seven stories...more

USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR...

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board...more

Motio, Inc. v. BSP Software LLC (E.D. Tex. 2016)

The fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case continues to reshape the landscape of patent-eligibility. Despite guidance from the USPTO, patentees still struggle with what exactly is patent-eligible...more

Top Five Stories of 2015

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

Top Stories of 2015: #16 to #20

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

Claiming Software as a Product not as a Process

Software patent applications present pitfalls not present for other inventions, because software is intangible. To pass muster in the USPTO, software is best described as a process, one of the four categories of patent...more

Intellectual Property Law - December 2015

Down the Rabbit Hole: Trends in Software Patent Court Decisions Post-Alice - Why it matters: In Alice Corp. v. CLS Bank, the U.S. Supreme Court held that claims for a computer-based software method for reducing...more

Important Development in Patent Subject Matter Eligibility for Diagnostic Method Claims: Federal Circuit Denies Sequenom Petition...

On December 2, 2015, the U.S. Court of Appeals for the Federal Circuit issued an order denying a petition for rehearing en banc in the closely watched Sequenom case. Earlier this year, on appeal from the U.S. District Court...more

That’s Patentable? The Far-Reaching Definition of an “Invention”

U.S. patent law provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,” 35 U.S. Code...more

Software Patent Eligibility - A Post-Alice Landscape Discussion

•Why are people talking about Section 101/Alice? –Under Section 101, only “eligible subject matter” can be patented: ..“Abstract ideas” are not eligible –Courts + Patent Office are treating many software and...more

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