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United States Patent and Trademark Office › Product of Nature Doctrine

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 -
McDonnell Boehnen Hulbert & Berghoff LLP

The Three Properties of Patent-Eligibility: An Empirical Study

McDonnell Boehnen Hulbert & Berghoff LLP on

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: Summary of Subject Matter Eligibility: Biotech/Pharma Inventions

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

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

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Assesses the Impact of Patent Eligibility's Changing Landscape

McDonnell Boehnen Hulbert & Berghoff LLP on

In a post-truth world, it is more tempting than ever to evaluate data based on gut instinct, intuition, and anecdotal evidence.  It is thus refreshing when results of a robust statistical analysis are published, even if the...more

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

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

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

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

Effect of USPTO’s October 2019 101 Guidance

Knobbe Martens on

The USPTO has released updated subject matter eligibility guidance that incorporates comments on the changes made in January 2019.The guidance is 22 pages long, with three appendices and 87 footnotes. Below are a few of the...more

Bradley Arant Boult Cummings LLP

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

Bradley Arant Boult Cummings LLP on

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

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

Federal Circuit Upholds Invalidity of Cleveland Clinic’s Claims Directed to Methods for Detecting an Elevated MPO Concentration

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

In Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, (Cleveland Clinic II)[1], a unanimous panel of the Federal Circuit provided yet another guidepost illustrating what is not...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

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

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

Global Patent Prosecution Newsletter - October 2018: How To Do The Two-Step In The United States: The Current State of...

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

In the wake of the Supreme Court’s Mayo and Alice decisions, uncertainty has surrounded what inventions are patent eligible in the United States. In Mayo and Alice, the Supreme Court developed a two-step test to determine...more

Sunstein LLP

July 2018 IP Update: New Guidance for Patenting Method-of-Treatment Inventions

Sunstein LLP on

The U.S. Patent and Trademark Office (USPTO) issued a memorandum on June 7 (the “Memorandum”), providing much-needed guidance to patent examiners as to whether method of treatment claims are to be considered patent-eligible...more

Mintz

With its Vanda Pharma and Berkheimer Memos, USPTO Provides Increased Clarity and Predictability in the Patent Eligibility...

Mintz on

In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018), we have had more good news for the patent eligibility of claims...more

Knobbe Martens

USPTO issues Memo on Patent Eligibility of Method of Treatment Claims

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) recently issued a memo providing examination guidance on the subject matter eligibility of the method of treatment claims. The memo discussed the recent Federal Circuit...more

Mintz - Intellectual Property Viewpoints

With its Vanda Pharma and Berkheimer memos, USPTO provides increased clarity around personalized medicine patent eligibility

Mintz - Intellectual Property Viewpoints on

In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018) the US Patent and Trademark Office (USPTO) has issued two memos...more

Knobbe Martens

The Law and Human Cloning

Knobbe Martens on

Until the cloning of Dolly the sheep in 1996 by scientists at the Roslin Institute, the idea of cloning a mammal, let alone a human being, was an idea relegated to science fiction. Dolly was created using a technique known as...more

Foley & Lardner LLP

USPTO Issues Patent Eligibility Examination Guidance Under Berkheimer

Foley & Lardner LLP on

As announced in a Federal Register Notice dated April 20, 2018, the USPTO has issued a new memorandum to the Examining Corps providing supplemental patent eligibility examination guidance under Berkheimer, a Federal Circuit...more

McAfee & Taft

Two-step analysis to assist in determining patent eligibility

McAfee & Taft on

Napoleon Hill once famously said, “Whatever the mind of man can conceive and believe, it can achieve.” However, what the mind of man can conceive is not necessarily patentable. Courts have long held that laws of nature,...more

Foley & Lardner LLP

Federal Circuit Finds Composition of Matter Ineligble For Patenting

Foley & Lardner LLP on

In a non-precedential decision issued in In re Bhagat, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that claims directed to certain lipid compositions were ineligible for...more

Knobbe Martens

Recent Development on Patent Eligibility of Method of Treatment Claims

Knobbe Martens on

The United States Patent and Trademark Office (USPTO) recently published a new revision to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP) (Revision 08.2017). This revision added a number of chapters...more

Knobbe Martens

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

Knobbe Martens on

Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101. These documents are available on the...more

Foley & Lardner LLP

USPTO Finds SureGene Personalized Medicine Treatment Unpatentable Under Mayo

Foley & Lardner LLP on

In Ex Parte Timothy, the USPTO Patent Trial and Appeal Board (PTAB) affirmed the Examiner’s rejection of personalized medicine treatment claims. This decision highlights the PTAB’s willingness to invalidate claims that it...more

Foley & Lardner LLP

USPTO Update on Patent-Eligibility for Life Science Inventions

Foley & Lardner LLP on

On August 2nd 2017, the USPTO hosted a Bicoastal Biotechnology/Chemical/Pharmaceutical Customer Partnership that focused on the USPTO’s current thinking on patent-eligibility. The meeting followed the USPTO’s June 25th, 2017...more

Fenwick & West LLP

Exploring the Legal Contours of Patent Subject Matter Eligibility

Fenwick & West LLP on

I'd like to go back to some first principles and history. Article 1, Section 8 of the Constitution neatly divided the promotion of, on the one hand: Science, the fields of knowledge and ideas, by securing exclusive...more

Fenwick & West LLP

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

Fenwick & West LLP on

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

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