News & Analysis as of

Patents United States Patent and Trademark Office Mayo v. Prometheus

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Eligibility Reform Introduced in Congress Once Again: Is the Second Time the Charm?

In an ideal world, patent eligibility would be a simple, clear, and non-controversial inquiry.  After all, the purpose of 35 U.S.C. § 101 is to inform the public which types of inventions are eligible for patenting and which...more

AEON Law

Patent Poetry: Big Tech Companies and Startups Disagree about Impact of Patent Law

AEON Law on

The US Patent and Trademark Office (USPTO) recently issued a study entitled “Patent eligible subject matter: Public views on the current jurisprudence in the United States.” The report was prepared in response to a...more

Weintraub Tobin

USPTO Requests Input On Patent Eligibility From Critical Sectors Impacted By Current Law

Weintraub Tobin on

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Three Properties of Patent-Eligibility: An Empirical Study

Patent eligibility is a bit of a mess these days.  Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Update on Patent Subject Matter Eligibility & Abstract Ideas

Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Prosecution Tool Kit: Summary of Subject Matter Eligibility: Biotech/Pharma Inventions

It has nearly been ten years since the Supreme Court’s landmark Mayo v. Prometheus (132 S.Ct. 1289 (2012)) decision, in which the Court established a two-prong test for determining patentable subject matter under 35 U.S.C. §...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - December 2019: Prosecuting Bioinformatics Patent Applications in the United States

This article discusses challenges in prosecuting bioinformatics patent applications before the United States Patent and Trademark Office (USPTO). Bioinformatics generally refers to an interdisciplinary field in which computer...more

Knobbe Martens

Trends and Changes in View of the USPTO’s Updated Revised Guidance (Presentation)

Knobbe Martens on

Partner Mauricio Uribe hosted a webinar presenting, "Trends and Changes in View of the USPTO's Updated Revised Guidance." Topics Include: • Summary of the October 2019 Update to the Revised Guidance •...more

Foley & Lardner LLP

A Patent-Eligible Diagnostic Method Claim

Foley & Lardner LLP on

On Friday I will be speaking at the AUTM Eastern Regional Meeting, on a panel discussing patent eligibility issues for life sciences inventions. My topic relates to what the USPTO refers to as “nature-based products,” but...more

Knobbe Martens

Federal Circuit Review - July 2019

Knobbe Martens on

Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

Bradley Arant Boult Cummings LLP

Detecting Disease Is Not a “Tangible and Useful Result” Eligible for Patenting

The federal appeals court with jurisdiction over questions of patent law has consistently held that methods of diagnosing a disease or other biological condition violate the Supreme Court’s ban on patenting “natural...more

Foley & Lardner LLP

Only The Law Is Hazy For CBD Patent Eligible Under Section 101

Foley & Lardner LLP on

In United Cannabis Corp. v. Pure Hemp Collective, Inc., Judge Martinez of the U.S. District Court for the District of Colorado determined that UCANN's CBD patent was not invalid under 35 USC § 101. The court reached its...more

Sheppard Mullin Richter & Hampton LLP

Returning to the Status Quo? – Proposed Outline for Section 101 Reform

On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101...more

Knobbe Martens

Legislators Propose “Section 101 Reform”

Knobbe Martens on

Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress Releases Framework for Section 101 Reform

Over the past six years, since the Supreme Court handed down its decision in Mayo Collaborative Services, Inc. v. Prometheus Laboratories, it has become more and more evident that correction of the path embarked upon by the...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

McDermott Will & Emery

PTO Releases Revised Patent Subject Matter Eligibility and Functional Claiming Guidelines

In view of recent US Court of Appeals for the Federal Circuit decisions, the US Patent and Trademark Office (PTO) issued two new guidelines: revised 2019 Patent Subject Matter Eligibility Guidance, and Examining...more

Sunstein LLP

January 2019 IP Update - PTO Director Iancu Launches Bold Initiative to Resolve Uncertainty in Patent Eligibility Determinations

Sunstein LLP on

In a notice of proposed rulemaking announced January 4, 2019 and published in the Federal Register on January 7, 2019, Director Andrei Iancu of the Patent and Trademark Office has seized the initiative in proposing clear...more

Nutter McClennen & Fish LLP

New USPTO §101 Guidelines Adopt Policies Favorable to Patent Applicants

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more

Locke Lord LLP

January 2019 Patent Subject Matter Eligibility Guidance

Locke Lord LLP on

On January 4, 2019, the U.S. Patent and Trademark Office issued new guidance for evaluating patent subject matter eligibility, which became effective on January 7, 2019. The purpose of the 2019 guidance is to provide more...more

Jones Day

USPTO Releases New Guidance on Patent Subject Matter Eligibility

Jones Day on

The Situation The legal uncertainty surrounding patent subject matter eligibility under Section 101 of the United States Code ("35 U.S.C. § 101") has been the subject of much attention, as it has become difficult for...more

WilmerHale

USPTO Issues Revised Patent Subject Matter Eligibility Guidance and Guidance for Examining Computer-Implemented Functional Claims...

WilmerHale on

The USPTO has issued updated guidance for examiners and administrative patent judges (APJs) relating to subject matter eligibility under 35 U.S.C. 101 and examining computer-implemented functional claim limitations under 35...more

K&L Gates LLP

USPTO Clarifies Alice/Mayo Step 2A With New Patent Subject-Matter Eligibility Guidance

K&L Gates LLP on

For the last several years, a major part of prosecuting software-related patents at the U.S. Patent and Trademark Office (“USPTO”) has been dealing with the USPTO’s inconsistent interpretation of patent subject-matter...more

Dorsey & Whitney LLP

New USPTO Guidance to Improve Predictability and Consistency in Subject Matter Eligibility Determinations

Dorsey & Whitney LLP on

On Friday, January 4, 2019, the USPTO announced revised guidance for determining subject matter eligibility under 35 U.S.C. § 101, as well as new guidance for the application of Section 112 to computer-implemented inventions,...more

Knobbe Martens

Clarity and Progress at the USPTO: The USPTO Publishes Revised Guidance on Patent Eligible Subject Matter

Knobbe Martens on

On Monday, January 7, 2019, a revised guidance for subject matter eligibility (USPTO Section 101 Revised Guidance) will take effect at the USPTO. With the newly revised guidance, the USPTO aims to clarify and standardize the...more

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