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The Narrow Pathway to Patent Eligibility in the Federal Circuit

The last 11 years have taught us much about the Federal Circuit; namely, that a majority of the judges simply do not seem to appreciate software. Given the statements that several have made in opinions, one might be able to...more

Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. 2025)

For the last several years, patentees and patent practitioners have been waiting for the Federal Circuit to weigh in on the patent eligibility of machine learning models. There was an expectation that, like any other...more

Yes, Patent Center Really is that Bad

For most of the last two decades, the U.S. Patent and Trademark Office offered its electronic filing system (EFS), through which practitioners could file patent applications and related prosecution documents, and private...more

USPTO Institutes Additional Fees for Large Information Disclosure Statement Filings

The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it."  There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure...more

OpenAI’s patent licensing “promise” is not what it seems

Generative artificial intelligence (genAI) company OpenAI recently published its “approach to patents,” which includes what might appear to be a promise not to assert its own patents against other parties except in...more

An Empirical Study of Low Allowance Rate Examiners

Any patent attorney who has been in the business for more than a few years understands from experience that some USPTO examiners are tougher than others.  This should not be surprising, as each examiner is an individual who...more

AI News Roundup – IP Protection hearing, USPTO AI Guidelines, potential data center for AI computing and more

To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following. Last week, the US House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet...more

USPTO Publishes Updated Guidance for Making Proper Obviousness Determinations

On February 27, 2024, the U.S. Patent and Trademark Office published its Updated Guidance for Making a Proper Determination of Obviousness ("Guidance") in the Federal Register.  The stated goal of the Guidance is...more

USPTO issues new guidance on AI’s role in inventorship of patents

On February 12, 2024, the United States Patent and Trademark Office (USPTO) issued guidance clarifying the role of artificial intelligence (AI) in the inventorship of patents. The document exhibits a nuanced approach to the...more

AI News Roundup - December 2023

There’s a lot happening in the world of AI. To help you stay on top of the latest news, we have compiled a roundup of the developments we are following. The Beijing Internet Court has ruled that a plaintiff who used...more

Judges Issue Standing Orders Regarding the Use of Artificial Intelligence

The impact of generative artificial intelligence (AI) is unsurprisingly significant in the field of education, with some teachers and professors responding by instituting oral examinations, handwritten essays, or requiring...more

American Axle's Claims Found Eligible on Remand

The storied case of American Axle v. Neapco Holdings has entered a new chapter -- not the final chapter but the plot has thickened considerably.  As a recap, Judge Stark, then of the District Court for the District of...more

How to Use (and Not Use) Large Language Models in Patent Application Drafting

It is hard to overstate the impact that large language models (LLMs) with chat-based interfaces, including ChatGPT and Bard, have had since their respective launches. These models are changing the high tech, education,...more

Axonics, Inc., v. Medtronic, Inc. (Fed. Cir. 2023)

Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated...more

You Are Going to Hear A Lot More FUD about Patent Law, So Here Are Some Facts

They may have known that it was coming.  Over the last several weeks, lobbying organizations and high-tech blogs have been slowly introducing the same old false, misleading, and deceptive arguments against patent law.  These...more

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

Sequoia Technology LLC v. Dell Inc. (Fed. Cir. 2023)

The patent statute requires that, to be patentable, the subject matter of an invention must be at least one of a process, machine, article of manufacture, or composition of matter.  It is hard to find examples of things that...more

Why we think AI can be an inventor on a patent application

On April 18, 2023, we submitted a Supreme Court amicus brief expressing our encouragement for the justices to rule on the question of whether it is proper for an artificial intelligence (AI) to be an inventor on a patent...more

Will Artificial Intelligence Force Us to be Less Dumb about How We Evaluate Humans?

Years ago, I was a proud parent when my children were invited to participate in an honors math program at their grade school.  But this initial delight turned to confusion, and eventually frustration....more

On Alice Rejections per USPTO Technical Center

The U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs).  Each TC is dedicated to one or more general technical fields.  In some cases, one TC may include two or more unrelated...more

ITC Takes Section 101 to Its Illogical Extreme

We are all familiar with the rhetorical device of a parade of horribles -- a series of very bad things that could happen if some action is (or isn't) taken.  Often, these parades involve a degree of hyperbole.  In other...more

The AI-Assisted Patent Attorney

When boiled down to a fundamental level, all technologies are double-edged swords.  A spear can be used to hunt game or to wage war.  A hammer can be used to build a shelter or to murder fellow humans.  Social media can be...more

[Webinar] The Weird And Evolving Landscape Of Software And Business Method Patent Eligibility - March 9th, 10:00 am - 11:15 am CST

The interpretation of 35 U.S.C. 101 has been in flux for over a decade. Please join MBHB Partner Michael Borella, Ph.D., as he discusses its latest iteration, how patent eligibility is currently viewed by the USPTO and...more

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

The Mental Process Exception to Patent Eligibility is Remarkably Brainless

In Liu Cixin's novel The Three Body Problem, the characters create a "computer" from human labor.  Millions of people serve as "bits" and hold up flags to indicate whether they represent 0s or 1s.  These individuals are given...more

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