News & Analysis as of

Algorithms Patent-Eligible Subject Matter Patents

McDonnell Boehnen Hulbert & Berghoff LLP

Intellectual Property Tips for America’s Quantum Hub

There has been a flurry of activity in Illinois over the last few months with regards to quantum computing. For example, the state enacted a package of bills that provides tax incentives for quantum computing development,...more

Alston & Bird

USPTO Updates Subject-Matter Guidance to Encompass Impact of Artificial Intelligence

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The U.S. Patent and Trademark Office (USPTO) has updated its patent subject-matter eligibility guidance to address inventions involving artificial intelligence (AI). Our Intellectual Property Team examines how the revised...more

Ballard Spahr LLP

New USPTO Guidance Hones AI-Related Patent Eligibility Criteria

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The U.S. Patent and Trademark Office (USPTO) has issued new guidance on patent subject matter eligibility, specifically concerning AI inventions. This guidance aims to assist patent examiners in assessing whether claims in a...more

Jones Day

Generative AI-Assisted Patent Inventorship Questions Remain

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The Situation: The U.S. Supreme Court recently denied certiorari in Thaler v. Vidal, leaving intact the Federal Circuit's ruling that only human beings, and not artificial intelligence ("AI") systems, can be inventors under...more

Linda Liu & Partners

Eligibility of Chinese Patent Applications in the Field of Algorithms (software)

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In recent years, there appear not only many foreign applicants who have been constantly investing in China’s patent assets, but also some big Chinese software companies applying for a large number of invention patents on...more

Knobbe Martens

Federal Circuit Review - March 2021

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Corresponding Structure Snafu: Lack of Algorithm Renders Claims Indefinite - In Rain Computing, Inc. v. Samsung Electronics Co. Ltd., Appeal No. 20-1646, the Federal Circuit held that the structure for performing a...more

ArentFox Schiff

Federal Circuit Affirms PTAB Decisions Holding Computer-Based Diagnostic Method Claims Ineligible

ArentFox Schiff on

Decision highlights the need for applicants to focus on additional improvements to technology when drafting and prosecuting applications directed to computer-implemented diagnostics methods. On March 25, 2021, the Federal...more

Haug Partners LLP

Federal Circuit affirms PTAB finding of patent ineligibility: a “new or different use of a mathematical process” is still a...

Haug Partners LLP on

On March 11, 2021, the Federal Circuit affirmed the PTAB’s finding that claims directed to a novel mathematical process to generate genetic inheritance data was patent ineligible under 35 U.S.C.S. § 101 and Alice. In In re...more

Jones Day

Machine Learning to Evaluate Genetic Data Held to be Patent Ineligible

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The Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) finding that certain claims related to genetic inheritance data analysis are patent ineligible.  The claims at issue sought to protect applying a...more

McDermott Will & Emery

Method for Determining Haplotype Phase Found Subject Matter Ineligible

McDermott Will & Emery on

In an appeal from a final rejection of a pending application, the US Court of Appeals for the Federal Circuit held that claims directed to methods for determining “haplotype phase” were correctly rejected under 35 USC § 101...more

Knobbe Martens

Innovative Data Processing Is an Ineligible Algorithm

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In Re THE BOARD OF TRUSTEES - Before Prost, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: A claim directed to an innovative mathematical process to generate data was a patent ineligible...more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Rules Public Key Cryptography Algorithm Invalid Under 35 U.S.C. § 101

Note:  The below is a sarcastic parody, in the spirit of our earlier sarcastic parodies. WASHINGTON D.C., June 23, 1984.  In a unanimous decision, the Federal Circuit has ruled U.S. Patent No. 4,405,829 invalid under 35...more

Fenwick & West LLP

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 5)

Fenwick & West LLP on

Part V. The Fictional Mental Steps Doctrine Does Not Apply To Programmed General Purpose Computers - The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented...more

Seyfarth Shaw LLP

The Patentability of Encryption Inventions

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Encryption seems to be in the news quite a bit lately. Electronic retailers and government organizations have become targets of computer hackers across the globe, attacking their servers and obtaining sensitive information...more

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

Fenwick & West LLP on

In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

Foley & Lardner LLP

Patent Subject Matter Eligibility – Impact on Litigation and Prosecution

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Personalized medicine relies on diagnostic technologies to accurately evaluate a patient’s clinical or genetic signature to guide treatment decisions. Protecting innovation by patenting the diagnostic methods and tools that...more

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