Patents Patent Applications Patent-Eligible Subject Matter

News & Analysis as of

Doubling Down on Idle Free

In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free...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

Federal Circuit Holds Sequenom Diagnostic Method Patent Invalid Under 101

On Friday, June 12, 2015, the Federal Circuit issued its decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., affirming the district court's finding that Sequenom’s claims are invalid under 35 USC § 101. The court's...more

OIP Technologies, Inc. v. Amazon.com, Inc. (Fed. Cir. 2015)

In its first substantive application of Alice v. CLS Bank in 2015, the Federal Circuit has once again shot down claims for not meeting the patent-eligibility requirements of 35 U.S.C. § 101. In 2012, OIP sued Amazon in...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

Drafting Software Patents In A Post-Alice World [Video]

It has been a challenging year for software patent owners following the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Since that ruling was handed down, a large number of software patents have been...more

Federal Circuit Frames Test for Patent-Eligibility

Personalized medicine relies on diagnostics to analyze a patient for individualized therapy and for monitoring a patient’s health status. Some diagnostic tests use natural products, for example gene sequences, either as the...more

Abstract Ideas: The Patent Office’s First Take on Alice Corp. v. CLS Bank International

The United States Patent Office periodically issues guidelines for Examiners, often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish the specific...more

Guest Post: USPTO Public Forum on Patent Guidance: My Thoughts as a Speaker and Attendee

It has now been a week since the U.S. Patent and Trademark Office held its public forum on the March 4th Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, &...more

Stakeholders Testify on Patent Subject Matter Eligibility

On May 9, 2014, the USPTO held a public forum on the USPTO’s new patent subject matter eligibility guidance (the “Guidance”). In promoting the forum, the USPTO stated that it wished to “to receive public feedback from...more

USPTO Holds Forum on Subject Matter Eligibility -- Part III

Last Friday, 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

Review – U.S. Patent and Trademark Office Subject Matter Eligibility Guidelines

On March 4, 2014 the USPTO issued new patent subject matter eligibility guidelines in an attempt to provide examiners and patent practitioners with some guidance on which claims improperly encompass laws of nature, natural...more

U.S. Patent Office Issues Extensive Subject Matter Eligibility Guidelines

The United States Patent Office periodically issues guidance for examiners (“Examiners”), often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish...more

USPTO Issues New Guidelines for Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural...

On March 4, 2014, the United States Patent and Trademark Office (USPTO) issued final guidance to the Examining Corps regarding patent eligibility of claims involving laws of nature, natural phenomena and natural products. The...more

The USPTO Announces New Guidelines for Determining Subject Matter Eligibility Under 35 U.S.C. §101 in View of Myriad, Prometheus...

March 10, 2014 – On March 4, 2014, the United States Patent & Trademark Office issued guidelines for the examination of “all claims (i.e., machine, composition, manufacture and process claims) reciting or involving laws of...more

Computer-Aided Method Determined Ineligible Under Section 101 - SmartGene, Inc. v. Advanced Biological Lab.

The U.S. Court of Appeals for the Federal Circuit, in a decision providing a glimpse into a panel’s post-Alice position with regard to patent-eligibility of computer-implemented inventions (under 35 U.S.C. § 101), determined...more

Fenwick & West and George Mason University Patentable Subject Matter Roundtable Recap

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office....more

Computer-Aided Selection Method Fails Patent-Eligibility

In SmartGene, Inc. v. Advanced Biological Labs., S.A., No. 2013-1186 (Fed. Cir., Jan. 24, 2014), the Federal Circuit held that a patent claiming the use of a computer to implement routine mental information-comparison and...more

Of Pies and Patent Eligibility: A Dialogue

You are heading to Grandma’s house for yet another family gathering. Upon entering the front door, you are belted by a thunderclap of the smells of mothballs, yellowed plastic sofa covers, cat hair and foot powder. As you...more

Federal Circuit Holds Computer-Implemented Method Claims Invalid Under Section 101

Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of...more

Alice Corp. v. CLS Bank Amicus Briefs Filed, Reckoning Day Approaches

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the...more

Sequenom Files Opening Brief in Appeal of Summary Judgment on Section 101 Grounds

Earlier this week, Sequenom, Inc. filed its opening brief in Ariosa Diagnostics, Inc. v. Sequenom, Inc., appealing summary judgment that its licensed claims to a genetic diagnostic method for detecting fetal diseases and...more

The Opening Decision Of The Australian Patent Office For 2014 – Another Invention Refused For Lack Of Patentable Subject Matter

In the first published decision by the Australian Patent Office for 2014, Aqua Index Ltd [2014] APO 2 (‘Aqua Index’), the Delegate of the Commissioner of Patents has refused yet another patent application for not being...more

Are TIME Magazine’s “25 Best Inventions Of The Year 2013” Patented And Does It Really Matter

Conventional wisdom tells us that great inventions and patent protection go hand in hand because that is one way that companies and inventors can recover and benefit from their investment in R&D, either by monetising their...more

Galderma Laboratories, L.P. v. Tolmar, Inc. (Fed. Cir. 2013)

When does a prior art disclosure of a concentration range of a medicament render obvious the use of a species that falls within that range, when that same use was also known in the prior art? After all, common sense should...more

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