News & Analysis as of

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 -

MiMedx Group, Inc. v. Liventa Bioscience, Inc. (N.D. Ga. 2017)

In the general chaos that has resulted from the Supreme Court's recent forays into trying to delineate the proper standards for patent subject matter eligibility (AMP v. Myriad Genetics, Mayo Collaborative Labs v....more

A Look At The USPTO Patent Eligible Subject Matter Report

by Foley & Lardner LLP on

On July 24, 2017, the USPTO issued a 48-page report on Patent Eligible Subject Matter. The report summarizes key court decisions interpreting and applying 35 USC § 101, international views on eligible subject matter, and...more

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

USPTO (United States Patent and Trademark Office) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent...more

What To Expect in the Future with the STRONGER Patents Act of 2017

by Brinks Gilson & Lione on

In late June 2017, Sen. Chris Coons (D-DE), Sen. Tom Cotton (R-AR), Sen. Dick Durbin (D-IL) and Sen. Mazie Hirono (D-HI) co-sponsored and introduced in the U.S. Senate the Support Technology and Research for Our Nation’s...more

USPTO Report on Patent Eligible Subject Matter

by BakerHostetler on

On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of...more

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

by Knobbe Martens on

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

The United States Patent Office Totally Rejected Your Claims? Don't Panic!

by Ward and Smith, P.A. on

In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more

Examiner Citations of Smartgene, Cyberfone Drop After McRo Memo

by Fenwick & West LLP on

After Alice, the USPTO's various guidance memoranda included references to non-precedential Federal Circuit decisions, particularly Smartgene, Cyberfone, and Planet Bingo, as examples of patent-ineligible subject matter. ...more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Recent Developments In Patent Law May 17, 2017

Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more

IPO, AIPLA and ABA IP Section Propose Legislative Fixes for Section 101

Between February and May of this year, IPO, AIPLA and the ABA IP Section have released proposals for amendments to 35 U.S.C. s. 101 to void the Mayo/Alice Rule and to clarify the definition of an “abstract idea” as it relates...more

Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017)

Recognicorp, owner of U.S. Patent No. 8,005,303, sued Nintendo for infringement in the U.S. District Court for the District of Oregon. After a transfer to the U.S. District Court for the Western District of Washington and...more

Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part III

In Part III of “Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics”, we consider the use of examiner interviews and how they can assist into obtaining allowable diagnostic claims. An examiner...more

ABA-IPL Section Proposes Amendments to s. 101 – Too Much of a “Good Thing”?

The ABA-IPL Section sent proposed amendments to PTO Director Lee intended to lessen the burden on patent applicants encountering the Mayo/Alice Rules for patent-eligible subject matter. The proposed amendments list exceptions...more

ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee

The Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent today to continuing U.S. Patent and Trademark Office Director Michelle Lee a letter containing its proposal for revising 35 U.S.C. § 10i in...more

U.S. Patent Office Provides Additional Examples of Eligible Subject Matter

by Knobbe Martens on

After the Supreme Court case of Alice v. CLS Bank in 2014, the Patent Office has issued a series of examination guidelines and examples to guide examiners and patent practitioners in determining patent eligible subject...more

Patents harder to obtain now, attorney say

by GableGotwals on

Back in 1899, Charles H. Duell, thencommissioner of the U.S. patent office, purportedly said “everything that can be invented hhttp://cms.jdsupra.com/docuploader/document/related/58d2c8cd-0e40-4396-bbfc-05ecd6f4c0ad/#as been...more

Shzoom Requests the Federal Circuit Reissue Trading Technologies as Precedential Opinion

by Fenwick & West LLP on

On January 18, 2017 the Federal Circuit issued an opinion in Trading Technologies Int’l., Inc. v. CQG, Inc., its first decision finding a user interface to be patent eligible subject matter. The court designated the opinion...more

AliceStorm Update February 2017

by Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

State Court Lacks Jurisdiction Over Legal Malpractice Claim That Required Court To Resolve Federal Issues Relating To Scope,...

by Hinshaw & Culbertson LLP on

Solar Dynamics, Inc. v. Buchanan Ingersoll & Rooney, P.C., 2017 WL 519314 (Fla. 2017) - Brief Summary - A Florida appellate court held that the trial court lacked jurisdiction over a legal malpractice action that...more

PTAB Puts Method Of Treatment Patents Under The 101 Knife

by Foley & Lardner LLP on

While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine....more

Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part I

Patent eligibility is a balancing act; the Supreme Court explained in Mayo that “too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect,...more

Intellectual Properties Owners Association Proposes Legislative Fix for s. 101

On Wed., February 8, 2017, IPO released the report of its legislation task force. Unlike the hundreds of academic analyses of the legislative history of s. 101 – and this report includes another – the Task Force took the...more

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part II

As discussed in a previous article, the U.S. Patent and Trademark Office recently published new subject matter eligibility examples directed to the abstract idea exception to patentability under 35 U.S.C. § 101. These...more

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part I

About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more

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