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

Supreme Court Deals Blow To Diagnostic Method Patents, Denies Cert In Sequenom

“If you can’t say something nice, don’t say anything at all” can be good words to live by, but in the context of the Supreme Court’s denial of certiorari in Sequenom, the silence is deafening–and could have a chilling impact...more

Evolving Patent Eligibility Standard for Computer-Implemented Inventions

Addressing the patent eligibility of computer-implemented inventions, the US Court of Appeals for the Federal Circuit concluded that under step one of the Alice eligibility test, claims directed to improvements in computer...more

Supreme Court Declines to Review Sequenom Ruling

The U.S. Supreme Court has denied certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc. (No. 15-1182), declining to review the Federal Circuit’s June 12, 2015, decision that certain methods of detecting paternally...more

Will the Supreme Court Clarify Patent-Eligibility?

The United States Supreme Court is set to render its decision on the grant or denial of Sequenom, Inc.’s (“Sequenom’s”) petition for writ of certiorari that posed the issue: ..Whether a novel method is patent-eligible...more

Federal Circuit Recognizes New, but Limited, Privilege for Patent Agent Communications

Introduction - Patent agents are licensed to practice before the United States Patent and Trademark Office (“USPTO”), and perform the same duties as patent attorneys in proceedings before the USPTO, including preparing...more

USPTO Releases Update on Patent Eligibility Decision in Light of Enfish

On May 19, the USPTO released an update to patent examiners regarding the U.S. Court of Appeals for the Federal Circuit’s (CAFC) recent decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive,...more

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 1)

Two years ago this Sunday, the Supreme Court in Alice Corp. Pty Ltd. v. CLS Bank Int'l addressed a relatively narrow issue: does a claim reciting a generic computer implementation transform an abstract idea into a...more

Intellectual Property Alert: Alice Turns Two

As we approach the two-year anniversary of the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), a survey shows that almost all of the Court of Appeals for the Federal Circuit’s decisions...more

Subject Matter Eligibility Guidance -- Example on Screening for Gene Alterations

Last month, the U.S. Patent and Trademark Office issued further guidance for determining subject matter eligibility under 35 U.S.C. § 101. In addition to a memorandum on subject matter eligibility determinations that was...more

Seeking Shelter From the Patent Eligibility Storm: Does the DTSA Provide Sanctuary?

For many charged with the development of intellectual property portfolios in the life sciences and software industries, navigating the stormy waters of patent eligibility has recently proven difficult. U.S. Supreme Court and...more

IP Developments In Biotechnology And Trade Secrets

2016 has been a year of IP changes and these changes have had an effect upon biotechnology as well as trade secrets. Patents: Will the U.S. Supreme Court Grant Cert. In Ariosa v. Sequenom? Ariosa v. Sequenom was...more

A New Hope for Software Patents?

Software patents have been facing intense scrutiny under 35 U.S.C. § 101 for subject matter eligibility since the U.S. Supreme Court’s Alice v. CLS Bank decision in 2014. In the last two years, the patent ecosystem...more

Two Recent Decisions Put Alice "Step One" on Center Stage at The Federal Circuit

On May 12 and May 17, 2016, the Federal Circuit issued decisions in two § 101 cases, EnFish, LLC v. Microsoft Corp. and In re TLI Communications, LLC. Both authored by Judge Hughes, the decisions illustrate the difficult...more

USPTO Selects Topics for Quality Case Study Pilot Program

In December, the U.S. Patent and Trademark Office invited stakeholders to submit patent quality-related topics that could be used as case studies in a new Enhanced Patent Quality Initiative (EPQI) pilot program. At the time,...more

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

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

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

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

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

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

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 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

U.S. Patent Office Updates Subject Matter Eligibility Guidance, Including Life Science Examples

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. §...more

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