News & Analysis as of

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Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of...more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

Mental Steps, Computers and the Patent Eligibility of Expert Systems

Earlier this week, I argued before the Federal Circuit on behalf of my client Advanced Biological Laboratories (ABL) in SmartGene v. ABL. This is, as far as I can determine, the first time the Federal Circuit has addressed...more

Is This Patentable?

One of the questions most often asked of patent attorneys is: “Is this patentable?” Such a question may apply to the questioner’s own invention or to the purported invention of another. While it may appear to be a...more

Myriad Beyond The US: Patent Eligibility Of Genes In Australia, New Zealand And South East Asia

This article discusses the patent protection of isolated, naturally occurring nucleic acids in Australia, NZ and a number of South East Asian countries. In these jurisdictions there is no express exclusion of these molecules...more

Patent Eligibility Challenges in Post-Grant Proceedings [Video]

Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- patent eligibility challenges in...more

New Zealand Passes Landmark Patent Law Reform

Following on from recent patent law changes in the U.S. and Australia, New Zealand recently passed the Patents Act 2013 (Act). With the passing of this Act, New Zealand patent law has been overhauled and modernised so that it...more

Rader’s Olive Branch: Ultramercial II Resolves the Judicial Deadlock of CLS Bank

The Federal Circuit’s en banc decision in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, (Fed. Cir. 2013) has been roundly criticized as a “nightmare,” further cementing the impression that the court was confused and in...more

Introducing … New Zealand’s Patents Act 2013

It has been a long time coming, but New Zealand finally has a new Patents Act. The New Zealand Patents Bill 2008 received its third and final reading in the New Zealand parliament on 28 August 2013 and will soon receive royal...more

Update on WARF Stem Cell Patent Challenge

As reported in my July 8, 2013 post, Consumer Watchdog (formerly known as The Foundation for Taxpayer and Consumer Rights) and the Public Patent Foundation (collectively “CW”) asked the Federal Circuit to determine if in...more

The Line Between Trade Secrets And Patents: Getting Dual IP Coverage On The Same Technology

Some might think that patents and trade secrets are mutually exclusive forms of intellectual property protection, and they would be partially correct. ...more

Patents: Is It Too Late To File??? Part 3

Continuing our discussion on patents and when and whether to file one… So, is it too late to file? As we have emphasized over the last few posts, it is crucial for inventors to keep the novelty of their...more

When To File For A Patent — Part 2:

So, as we discussed last week, ideas aren’t patentable. But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent? Full-blown patent protection is not...more

So You Have An Idea, But Is It Patentable Yet? Part 1

First, a parable. Like so many others, you’ve been pondering for years how to build the better mousetrap. Finally, inspiration hits you. You don’t have any of the particulars, but you know that with more thought, time, and...more

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