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Patent-Eligible Subject Matter United States Patent and Trademark Office

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 -

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

by Knobbe Martens on

Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101. These documents are available on the...more

Mayo at Five: Are Traditional Method of Treatment Claims in Danger Under Section 101?

by Fish & Richardson on

Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. The Mayo case introduced a new two-step test for patent...more

USPTO Finds SureGene Personalized Medicine Treatment Unpatentable Under Mayo

by Foley & Lardner LLP on

In Ex Parte Timothy, the USPTO Patent Trial and Appeal Board (PTAB) affirmed the Examiner’s rejection of personalized medicine treatment claims. This decision highlights the PTAB’s willingness to invalidate claims that it...more

USPTO Update on Patent-Eligibility for Life Science Inventions

by Foley & Lardner LLP on

On August 2nd 2017, the USPTO hosted a Bicoastal Biotechnology/Chemical/Pharmaceutical Customer Partnership that focused on the USPTO’s current thinking on patent-eligibility. The meeting followed the USPTO’s June 25th, 2017...more

Surviving Alice with an Appeal

by Fenwick & West LLP on

This third article in the “Surviving Alice” series examines how the USPTO’s Patent Trial and Appeal Board has responded to the U.S. Supreme Court’s June 2014 Alice decision. It also shows how applicants can use the PTAB’s...more

Mayo at Five: Eligibility of Diagnostic Method Claims

by Fish & Richardson on

Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. Decisions following Mayo – from the Supreme Court to the...more

MiMedx Group, Inc. v. Liventa Bioscience, Inc. (N.D. Ga. 2017)

In the general chaos that has resulted from the Supreme Court's recent forays into trying to delineate the proper standards for patent subject matter eligibility (AMP v. Myriad Genetics, Mayo Collaborative Labs v....more

A Look At The USPTO Patent Eligible Subject Matter Report

by Foley & Lardner LLP on

On July 24, 2017, the USPTO issued a 48-page report on Patent Eligible Subject Matter. The report summarizes key court decisions interpreting and applying 35 USC § 101, international views on eligible subject matter, and...more

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

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

What To Expect in the Future with the STRONGER Patents Act of 2017

by Brinks Gilson & Lione on

In late June 2017, Sen. Chris Coons (D-DE), Sen. Tom Cotton (R-AR), Sen. Dick Durbin (D-IL) and Sen. Mazie Hirono (D-HI) co-sponsored and introduced in the U.S. Senate the Support Technology and Research for Our Nation’s...more

USPTO Report on Patent Eligible Subject Matter

by BakerHostetler on

On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of...more

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

by Knobbe Martens on

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more

The United States Patent Office Totally Rejected Your Claims? Don't Panic!

by Ward and Smith, P.A. on

In my almost 17 years of practice before the United States Patent and Trademark Office ("PTO"), by far the most common telephone call I receive from inventors is a frantic inquiry about an Office Action received from the PTO...more

Examiner Citations of Smartgene, Cyberfone Drop After McRo Memo

by Fenwick & West LLP on

After Alice, the USPTO's various guidance memoranda included references to non-precedential Federal Circuit decisions, particularly Smartgene, Cyberfone, and Planet Bingo, as examples of patent-ineligible subject matter. ...more

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. Please see full publication below for more information....more

Recent Developments In Patent Law May 17, 2017

Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more

Recognicorp, LLC v. Nintendo Co. (Fed. Cir. 2017)

Recognicorp, owner of U.S. Patent No. 8,005,303, sued Nintendo for infringement in the U.S. District Court for the District of Oregon. After a transfer to the U.S. District Court for the Western District of Washington and...more

Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part III

In Part III of “Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics”, we consider the use of examiner interviews and how they can assist into obtaining allowable diagnostic claims. An examiner...more

ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee

The Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent today to continuing U.S. Patent and Trademark Office Director Michelle Lee a letter containing its proposal for revising 35 U.S.C. § 10i in...more

U.S. Patent Office Provides Additional Examples of Eligible Subject Matter

by Knobbe Martens on

After the Supreme Court case of Alice v. CLS Bank in 2014, the Patent Office has issued a series of examination guidelines and examples to guide examiners and patent practitioners in determining patent eligible subject...more

Patents harder to obtain now, attorney say

by GableGotwals on

Back in 1899, Charles H. Duell, thencommissioner of the U.S. patent office, purportedly said “everything that can be invented hhttp://cms.jdsupra.com/docuploader/document/related/58d2c8cd-0e40-4396-bbfc-05ecd6f4c0ad/#as been...more

Shzoom Requests the Federal Circuit Reissue Trading Technologies as Precedential Opinion

by Fenwick & West LLP on

On January 18, 2017 the Federal Circuit issued an opinion in Trading Technologies Int’l., Inc. v. CQG, Inc., its first decision finding a user interface to be patent eligible subject matter. The court designated the opinion...more

AliceStorm Update February 2017

by Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

State Court Lacks Jurisdiction Over Legal Malpractice Claim That Required Court To Resolve Federal Issues Relating To Scope,...

by Hinshaw & Culbertson LLP on

Solar Dynamics, Inc. v. Buchanan Ingersoll & Rooney, P.C., 2017 WL 519314 (Fla. 2017) - Brief Summary - A Florida appellate court held that the trial court lacked jurisdiction over a legal malpractice action that...more

PTAB Puts Method Of Treatment Patents Under The 101 Knife

by Foley & Lardner LLP on

While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine....more

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