United States Patent and Trademark Office Patent-Eligible Subject Matter

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
News & Analysis as of

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review - Brooks Kushman Post-Grant

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written...more

A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB’s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the...more

PTO Releases New Memo on Recent Subject Matter Eligibility Decisions

In a memorandum to patent examiners dated November 2, 2016, the US Patent and Trademark Office (PTO) addressed recent subject matter eligibility decisions. The memorandum was spurred by two precedential US Court of Appeals...more

Guest Post -- USPTO Charting the Way for Subject Matter Eligibility

On November 2, 2016, the United States Patent and Trademark Office (USPTO) issued an important and forward-looking memo on Recent Subject Matter Eligibility Decisions for patent applications that offered guidance for drafting...more

How Much Did the Federal Circuit Narrow Eligibility for Covered Business Method Review?

Earlier this week, the Federal Circuit narrowed the types of patents eligible for covered business method (CBM) review. In Unwired Planet, LLC v. Google Inc., Case No. 15-1812, (Fed. Cir. Nov. 21, 2016) (“Unwired Planet”),...more

A Compelling Invention Story May Support Patent-Eligibility

The Mayo/Alice two-step patent-eligibility framework focuses on the patent claims. Nevertheless, recent Federal Circuit decisions have relied on patent specification statements to support holdings that the claims are...more

Determining Patent Eligibility Pre-Claim Construction May Be Premature

For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc. In a divided opinion, the Federal Circuit reversed the district court and held...more

Intellectual Property Bulletin - Fall 2016

Mean Girls v. The Right of Publicity: Lessons Learned From the Lohan and Gravano Lawsuits - On September 1, 2016, a New York appellate court ended two closely watched right of publicity lawsuits brought by Lindsay...more

USPTO Holds First Roundtable on “Subject Matter Eligibility Guidelines”

On November 14th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The structure was unique as there...more

USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

Over the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and...more

Palate Pleasing Zucchinis Dominate Squash Patenting

With Halloween over and Thanksgiving looming, recipes for butternut squash soup abound while caved-in pumpkin faces rot away in back alleys. For all their exotic shapes and colors, winter squashes remain tethered to autumnal...more

Patentee's Day of Thanks Comes in Early November: Assessment of the USPTO's Recent Memorandum Regarding Patent Eligibility for...

A recent U.S. Patent & Trademark Office (USPTO) memorandum to the Patent Examining Corps, in combination with precedential cases from the Federal Circuit, provides positive guidance to owners of software patents and patent...more

Federal Circuit Avoids Abstract Idea Definition, Finds Computer Networking Patents Not Patent-Ineligible Despite Components...

On November 1, 2016, the Federal Circuit issued a decision in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., finding that asserted computer program and method claims for solving an accounting and billing problem faced by...more

PTO Schedules s. 101 Roundtables

At 81 Fed. Reg. 71485, The PTO has scheduled two roundtables at the PTO to receive feedback from the IP community, particularly on the Examples that were promulgated in May. The first roundtable will be on November 14th from...more

The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously...more

USPTO to Hold Roundtables on Subject Matter Eligibility

In a notice published in the Federal Register (81 Fed. Reg. 71485) last month, the U.S. Patent and Trademark Office announced that it will be holding two roundtables in order to obtain public input on patent subject matter...more

USPTO Issues Memorandum on Recent Subject Matter Eligibility Decisions

On November 2nd, the U.S. Patent and Trademark Office published an update to its guidance regarding the examination of claims with respect to the patent-eligibility requirements of 35 U.S.C. § 101 (see Memorandum entitled...more

USPTO Issues New Guidance On 101

The new guidance discusses the McRO and BASCOM decisions. Regarding McRO, the guidance emphasizes not overgeneralizing the claims and considering whether the subject matter allows a computer to perform a function not...more

More Good News for Software Patents: Amdocs (Israel) Limited v. Opnet Telecom, Inc., 2015-1180, Fed. Cir. (November 1, 2016)

In a spate of recent decisions, the Federal Circuit seems to be loosening the reins on 101 software subject matter disqualifications. In Amdocs, the Federal Circuit considered whether the district court was in error when it...more

Intellectual Property Law - October 2016

Federal Circuit After Stryker/Halo - Why it matters: On June 13, 2016, the U.S. Supreme Court decided the consolidated cases of Stryker Corp. v. Zimmer, Inc. and Halo Electronics, Inc. v. Pulse Electronics, Inc. and, as...more

Intellectual Ventures I LLC v. Symantec Corp. -- Judge Mayer on the First Amendment

Decided September 30th, this Federal Circuit case is already making waves. The majority opinion seems to be at tension with the Court's outcome in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, but the real...more

AliceStorm Update for October 2016

The Federal Circuit's recent decision in McRO has been interpreted by many in the patent community as a further signal that the so-called "pendulum" is swinging back to a more favorable position for patentees. There is some...more

A Silver Lining for Software Patents

Software patents play an important role in commercializing innovation in our increasingly digital world. The software inventions that scientists, developers, and engineers create are valuable and deserve protection. But since...more

September Was a Good Month for Patent Eligibility in the District Courts

Anecdotally, there seems to be a loosening up regarding the application of § 101 by the District Courts. The 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int'l has been referred to as sounding a death knell for...more

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