News & Analysis as of

Software Section 101 United States Patent and Trademark Office

McDonnell Boehnen Hulbert & Berghoff LLP

What? The Pokémon Company’s Patent Applications Are Evolving!

In September of last year, and in light of a corresponding Japanese patent infringement suit, I published an article detailing how The Pokémon Company had filed two patent applications at the United States Patent and...more

WilmerHale

USPTO Issues Guidance Update on Subject Matter Eligibility of Artificial Intelligence

WilmerHale on

On July 17, 2024, the United States Patent and Trademark Office (USPTO) published guidance regarding the patent subject matter eligibility of claims concerning technology applicable to artificial intelligence (AI)....more

BakerHostetler

USPTO AI Examination Update Provides New Example Cases Analyzing Subject Matter Eligibility Under §101

BakerHostetler on

In a July 16 press release, The U.S. Patent and Trademark Office (USPTO) announced that it issued a guidance update on “patent subject matter eligibility to address innovation in critical emerging technologies including...more

Holland & Knight LLP

A Bad Day for this Patent Applicant: Travel Itinerary Applications Ineligible Under Section 101

Holland & Knight LLP on

In the case of In re Bongiorno, No. 2020-1835, 2021 WL 1997454, at *4 (Fed. Cir. May 19, 2021), patent applicant James Bongiorno appealed the Patent Trial and Appeal Board's (PTAB) finding that two of his patent applications...more

Fish & Richardson

Patenting Software: A Case Study in Overcoming Alice (Updated)

Fish & Richardson on

In 2014, the United States Supreme Court handed down its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, which significantly altered the patentability of software, business methods,...more

Knobbe Martens

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

Knobbe Martens on

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

McDonnell Boehnen Hulbert & Berghoff LLP

Ex parte Smith (PTAB 2019)

Software Claims Survive Section 101 Challenge and Are Found to Be Directed to Patent-Eligible Subject Matter - In the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) recently designated its...more

McDonnell Boehnen Hulbert & Berghoff LLP

Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test

It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more

K&L Gates LLP

Abstract Ideas and the USPTO: Examiner Guidance Post Enfish and TLI

K&L Gates LLP on

On May 19, 2016, the U.S. Patent and Trademark Office issued a memorandum containing a summary of two recent Federal Circuit decisions along with a directive for how patent examiners should apply the holdings of the...more

Dorsey & Whitney LLP

Federal Circuit Holds District Court Abstractness Analysis Too Abstract for Alice under 35 USC § 101

Dorsey & Whitney LLP on

Clients in the software space now have stronger arguments for subject matter eligibility, following the Federal Circuit decision in Enfish LLC v. Microsoft Corp. (May 12, 2016). The decision also touches on novelty,...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

Fenwick & West LLP on

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Womble Bond Dickinson

Arguing a Post-Alice §101 “Abstract Idea” Rejection during Patent Prosecution

Womble Bond Dickinson on

Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an...more

Goodwin

Impact of the Alice V. CLS Bank Decision – A Year-End Review

Goodwin on

The Supreme Court’s Alice Corp. v. CLS Bank Int’l decision has had a significant impact on the prosecution of software-based patent applications, on the institution of 101-based covered business method patent reviews, and on...more

Knobbe Martens

Patent Update for IT and Biotech Companies: New Pieces to the Patent Puzzle

Knobbe Martens on

In This Presentation: - PATENT ELIGIBLE SUBJECT MATTER: LIFE IN SOFTWARE/IT AFTER ALICE CORPORATION V. CLS BANK (AND OTHER RECENT 101 DECISIONS) - A Brief History with respect to Software and Biz Methods ...more

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