News & Analysis as of September 24, 2024

Abstract Ideas

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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 -

Yu v. Apple (Fed. Cir. 2021)

McDonnell Boehnen Hulbert & Berghoff LLP on 6/14/2021

When the Supreme Court began poking around into the law of patent eligibility just over a decade ago, the invention topics that it considered under the abstract idea exception were limited to types of financial transactions. ...more

What is an Abstract Idea, Anyway?

McDonnell Boehnen Hulbert & Berghoff LLP on 3/3/2020

In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice...more

Trends and Changes in View of the USPTO’s Updated Revised Guidance (Presentation)

Knobbe Martens on 11/11/2019

Partner Mauricio Uribe hosted a webinar presenting, "Trends and Changes in View of the USPTO's Updated Revised Guidance." Topics Include: • Summary of the October 2019 Update to the Revised Guidance •...more

Remembering Justice Stevens and His Bilski Concurrence

Holland & Knight LLP on 7/25/2019

Justice John Paul Stevens passed away last week at the age of 99. During his nearly 35 years on the Supreme Court, Justice Stevens did not hesitate to make his views on intellectual property rights known – in short, they...more

Good Vibrations, Bad Vibrations: American Axle v. Neapco Ruling

Fenwick & West LLP on 3/15/2018

In reading post-Mayo/Alice decisions, some seem more comfortable than others. I’ve been having a tough time getting my head and heart around a recent decision from Judge Leonard Stark of the District of Delaware. The case is...more

Some Cardiac Monitoring Patents Beat Alice Challenge, While Others Fail to Survive

Proskauer - New England IP Blog on 5/18/2017

In the time since Alice changed the landscape of patent eligibility for certain types of inventions, the Federal Circuit has begun pumping out opinions interpreting this landmark Supreme Court case. The expanding body of law...more

Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

Womble Bond Dickinson on 3/24/2017

We wrote earlier about the Supreme Court’s renewed interest in patent eligibility and seemingly unintended confusion between the patent eligibility requirements of 35 U.S.C. § 101 and the remaining patentability requirements...more

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part I

McDonnell Boehnen Hulbert & Berghoff LLP on 1/20/2017

About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more

More Lessons From McRo

Fenwick & West LLP on 9/26/2016

My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the...more

Update on Patent Eligibility Decisions for First Quarter, 2016

Fenwick & West LLP on 5/16/2016

Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions...more

USPTO Updates Alice Guidance with Examiner Instructions, More Work Needed

Fenwick & West LLP on 5/16/2016

On May 4, the USPTO issued a new memorandum for patent examiners, “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” (“Examiner...more

Mortgage Grader, Inc. v. First Choice Loan Services Inc. (Fed. Cir. 2016)

McDonnell Boehnen Hulbert & Berghoff LLP on 1/25/2016

Financial Services Patent Claims Invalid - On January 20, 2016, the Federal Circuit issued an opinion in the case captioned Mortgage Grader, Inc. v. First Choice Loan Services Inc., NYLX, Inc. This case involves patent...more

Why Business Methods Are Difficult to Patent

Weintraub Tobin on 11/16/2015

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in...more

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

Fenwick & West LLP on 10/22/2015

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

July 2015 Update on Subject Matter Eligibility

McDonnell Boehnen Hulbert & Berghoff LLP on 8/26/2015

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more

The Supreme Court Declines to Categorically Deny Patent Protection for Software

Neal, Gerber & Eisenberg LLP on 6/20/2014

In a highly-anticipated case that had the potential to drastically change the patent landscape surrounding computer-implemented inventions, in Alice Corp. v. CLS Bank Int’l the Supreme Court took a measured approach to the...more

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