It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018,...more
5/3/2018
/ Claim Construction ,
CLS Bank v Alice Corp ,
Guidance Update ,
Litigation Strategies ,
Mayo v. Prometheus ,
MPEP ,
Patent Examinations ,
Patent Prosecution ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
USPTO ,
Young Lawyers
Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more
Originally published in IP Watchdog on February 22, 2018.
Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such...more
During examination of claims in a patent application, claim rejections from the USPTO (United States Patent and Trademark Office) under 35 USC §102 and/or 35 USC §103 usually assert that one or more cited references show all...more
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
Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals.
The...more
Ever since the Supreme Court ruling on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent practitioners have seen an historic increase in the number of 35 USC §101 “abstract ideas” rejections of patent...more
Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United...more
During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC...more
A claim in a patent application or issued patent should express not only the building blocks of an invention but also the relationships among the building blocks. Understanding and expressing these relationships clearly in a...more
Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an...more
Patent claims can be rejected, during patent prosecution, for a very large variety of reasons. A proper rejection is factually based. Examiners for the United States Patent and Trademark Office, and patent practitioners...more
There are some striking parallels between inventions and living organisms, and between technology in a consumer marketplace and an ecosystem. Insights gained through the comparisons may be beneficial to inventors, companies,...more
Readers are likely aware that the Supreme Court of the United States has issued a ruling, in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL...more
On March 4, 2014, the United States Patent and Trademark Office issued a memorandum and quick reference sheet on the “2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of...more