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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

AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

Directory Assistance Call Completion Is Not A Financial Service for CBM Purposes - On May 4, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a Covered Business Method (CBM)...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

Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror

Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, evaluated various patent prosecution options in Nutter Insights. Rory analyzed the five programs that can accelerate the process and their differentiators...more

Due May 24 — Comments On Improving Patent Quality Metrics

Many patent attorneys received a notice recently, copied below, alerting them to efforts by the US Patent Office to improve patent quality....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

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

Intellectual Property Bulletin - Spring 2016

Supreme Court to Weigh In on Damages for Design Patent Infringement - Recent decisions from the U.S. Court of Appeals for the Federal Circuit regarding damages available in design patent cases highlight the court’s...more

The Government Whittles Away at Life Sciences Patents

The current U.S. Supreme Court has been noted for its hostility to patent holders in general, but the Supreme Court has been especially hostile to any sort of life sciences or software invention. The Court has attempted to...more

Federal Circuit Broadens Eligibility Requirements for Software Inventions

Enfish, LLC v. Microsoft Clarifies Which Patents are Not Direct to "Abstract Ideas" - Last week, in Enfish, LLC v. Microsoft Corp., 2016 WL 2756255 (Fed.Cir. 2016), a panel of the U.S. Court of Appeals of the federal...more

Software Patents Aren’t Inherently Abstract—Patent Appeals Court Clarifies and Enhances Software Patent Eligibility

In Enfish, LLC v. Microsoft Corp., the U.S. Court of Appeals for the Federal Circuit reversed a California district court’s summary judgment that two software patents were directed to an “abstract idea” without...more

Update on Patent Eligibility Decisions for First Quarter, 2016

Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions...more

PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter...more

New USPTO Guidance On Patent Eligibility Of Natural Products

The new USPTO patent eligibility examples include two examples for “natural products” based inventions which appear to be consistent with the examples provided in the December 2014 set of patent eligibility examples. Although...more

USPTO Updates Alice Guidance with Examiner Instructions, More Work Needed

On May 4, the USPTO issued a new memorandum for patent examiners, “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” (“Examiner...more

Legal Alert: Good News for Software Patents?

Federal Circuit’s Enfish Decision and PTO Guidelines Should Give Hope to Patentees - In the last few years, U.S. Courts have drastically changed their interpretation of the law governing patent eligibility, 35 U.S.C. §...more

Section 101 and the Growing Alice Backlash

35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent-eligible. However, the Supreme Court has traditionally...more

USPTO Clarifies Subject Matter Eligibility Procedure

On May 4, 2016, the United States Patent and Trademark Office (“USPTO”) published a memorandum to assist patent examiners (“Examiners”) in crafting subject matter eligibility rejections and analyzing applicant responses to...more

Patentable Subject Matter in the Life Sciences: New USPTO Guidance Impacts Diagnostic Methods and Natural Products

The United States Patent and Trademark Office issued on May 6, 2016, updated guidance to its patent Examiners that would have an impact on patent applications covering diagnostic methods and natural products. The new...more

U.S. Patent Office Releases Further Guidance on Patent Subject Matter Eligibility

Patentees in the software and life sciences industries are paying close attention to new guidance issued by the U.S. Patent Office on the patent eligibility of technology in those areas. The guidance, released May 5, 2016...more

New Patent Office Memo To Examiners Raises The Bar For § 101 Rejections

Since the Supreme Court’s Alice decision, the Patent Office has struggled with training examiners to properly analyze claims under section 101, and set forth well-reasoned patent-eligibility rejections. The Patent Office...more

New USPTO Guidance On Patent Eligibility Of Diagnostic Methods

The patent eligibility examples published by the USPTO on May 5, 2016 include two new examples relating to diagnostic methods and two new examples relating to “nature-based” products. This article will consider the diagnostic...more

USPTO Releases Patent Eligibility Update

On May 4, 2016, the USPTO released a “May 2016 Subject Matter Eligibility Update” (“Update”) providing guidance to patent examiners on formulating a subject matter eligibility rejection and evaluating an applicant’s response...more

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