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Patent-Eligible Subject Matter

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
Jones Day

Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

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In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Sheppard Mullin Richter & Hampton LLP on

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

Fish & Richardson

Federal Circuit Finds Conventional Components Can Provide a Technological Advantage at Alice Step 1

Fish & Richardson on

On September 9, the Federal Circuit reversed a Northern District of California decision that invalidated two video camera patents as being directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. Contour IP...more

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

Does the United States Patent Office Protect Unpublished Applications When Searching the Internet and Artificial Intelligence...

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

Short answer: Yes, but… Short answer: Yes, but… Many practitioners in sensitive technology areas file patent applications with non-publication requests or may abandon their applications if examination is not going well...more

Knobbe Martens

Tying Claimed Technological Advancements to Specific Technological Methods Is a Winning POV on Patent Eligibility

Knobbe Martens on

Before Reyna, Prost, and Schall. Appeal from the United States District Court for the Northern District of California. Summary: Claims are patent-eligible under 35 U.S.C. § 101 where the written description discloses...more

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

Foley & Lardner LLP

Alice Patent Eligibility Analysis Divergence Before USPTO and District Court

Foley & Lardner LLP on

The Mayo/Alice framework for determining subject matter eligibility of patents under 35 U.S.C. §101 has long since antagonized both patent prosecutors and litigators alike, causing significant uncertainty in the realm of...more

Knobbe Martens

Combining Abstract Ideas Does Not Make Them Less Abstract

Knobbe Martens on

Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas. Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make...more

BakerHostetler

Federal Circuit Reverses Ineligibility Finding on POV Cameras and Processing

BakerHostetler on

On September 9, the Court of Appeals for the Federal Circuit reversed a finding by the District Court for the Northern District of California that point-of-view camera claims were ineligible. ...more

Knobbe Martens

Federal Circuit Review | August 2024

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Specify the Steps of Information Manipulation or Lose under § 101 - In Mobile Acuity Ltd. v. Blippar Ltd. Appeal No. 22-2216, the Federal Circuit held that patent claims that merely recite result-orientated, functional...more

Goodwin

Are AI Inventions Harder to Patent?

Goodwin on

For a recent article published in Law360, we looked at data from the US Patent and Trademark Office (USPTO) covering both AI and non-AI inventions from 2015 to 2020. Our findings show a stark difference: AI-related inventions...more

Foley & Lardner LLP

Another Step Forward for the Patent Eligibility Restoration Act

Foley & Lardner LLP on

I have been waiting for developments on the Patent Eligibility Restoration Act (PERA) since I testified before the Subcommittee on Intellectual Property of the Senate Judiciary Committee in January 2024, and in the meantime...more

Knobbe Martens

Patent Eligibility Reform Introduced in the U.S. House of Representatives

Knobbe Martens on

Today Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the Patent Eligibility Restoration Act (PERA), bipartisan legislation mirroring a proposed law introduced last year by Senators Thom Tillis (R-NC)...more

ArentFox Schiff

USPTO Issues Updated AI Subject Matter Eligibility Guidance

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) recently issued its 2024 Guidance on Patent Subject Matter Eligibility and July 2024 Subject Matter Eligibility Examples. This latest update builds on the 2019 Guidance by providing...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

Baker Donelson on

As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Knobbe Martens

Parent (Un)Trap: Most Parent Patents Cannot Be Invalidated By Their Children Because Of PTA

Knobbe Martens on

Medical device companies are often well versed in prosecuting multiple patents within a single “family.”  Indeed, such families are often of significant value to early stage (and later stage) medical device companies. But a...more

Akin Gump Strauss Hauer & Feld LLP

Akin Intelligence - July 2024

Akin Gump Strauss Hauer & Feld LLP on

Welcome to the July edition of Akin Intelligence. This month, United States agencies released several key pieces of artificial intelligence (AI) guidance, including patent eligibility guidance from the United States Patent...more

Hudnell Law Group

Intrinsic Record Paramount In Rule 12 Eligibility Determinations

Hudnell Law Group on

In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more

Holland & Knight LLP

Section 101 Patent Eligibility Roundup: It's Been Too Long

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It's been a while since I last posted, and I apologize for that. (If interested, here's an alert about what's kept me away: a CFAA trial we wrapped up in late July.) But I am back, so let's look at the latest on the Section...more

Akin Gump Strauss Hauer & Feld LLP

Merger of District Court Dismissals Torpedoes Appeal from PTAB Decision at Federal Circuit

Akin Gump Strauss Hauer & Feld LLP on

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more

McDonnell Boehnen Hulbert & Berghoff LLP

Intellectual Property Tips for America’s Quantum Hub

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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

Baker Botts L.L.P.

The Importance of Prong Two of Step 2A for AI inventions

Baker Botts L.L.P. on

Under the direction of President Biden’s executive order on artificial intelligence (AI), the United States Patent and Trademark Office (USPTO) issued a guidance update on the subject matter eligibility analysis “to promote...more

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

AI Inventorship: Navigating Patent Rights Around the Globe

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

Recently, the United States Patent and Trademark Office (USPTO) released proposed guidelines addressing the complex issue of AI inventorship. The PTO is not the only agency attempting to tackle this issue; jurisdictions...more

Knobbe Martens

Specify the Steps of Information Manipulation or Lose under § 101

Knobbe Martens on

Before Lourie, Bryson, and Stark. Appeal from the United States District Court for the Central District of California. Summary: Patent claims that merely recite result-orientated, functional language without specifying the...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

A&O Shearman on

In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

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