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United States Patent and Trademark Office Patent-Eligible Subject Matter

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -

New Year's Resolutions For The U.S. Patent System

by Foley & Lardner LLP on

It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more

Unclaimed Features Cannot Save Eligibility of Claims

by McDermott Will & Emery on

Adhering to its now-familiar two-step framework for determining patent eligibility under the Supreme Court of the United States’ 2014 decision in Alice (IP Update, Vol. 17, No. 7), the US Court of Appeals for the Federal...more

Canada Provides More Guidance On Patent Eligibility Of Diagnostic Method Claims

by Foley & Lardner LLP on

While the patent eligibility of diagnostic method claims remains questionable in the United States, the Canadian Intellectual Property Office has issued updated guidance on the types of diagnostic method claims that can–and...more

Patents in the burgeoning cannabis industry

by Farella Braun + Martel LLP on

With cannabis legal in 29 states for medical use and in eight states for recreational use, there is a surge of entrepreneurism and an influx of capital into the rapidly expanding cannabis industry. Although cannabis remains a...more

BioPharma Patents Quick Tips & News – November 2017

Diagnostic Method Claims in the U.S. I. Let’s recap the last five years! Mayo (2012) = Supreme Court prohibits patents for diagnostic methods without “significantly more” (essentially, you must not only discover a...more

When the Blind Go Leading the Blind: The USPTO’s §101 Eligibility Guidance

In the immediate aftermath of the 2013 Myriad decision, the United States Patent and Trademark Office (USPTO) released a set of guidance documents in March 2014 explaining how it planned to apply the new §101 precedents....more

Intellectual Property Bulletin - Fall 2017

by Fenwick & West LLP on

In the Winter 2017 edition of the Intellectual Property Bulletin, we reported on IP-related changes expected with the incoming Trump administration and the new Congress. Here we look at two such changes currently underway:...more

Intellectual Property Misconceptions Debunked

by Snell & Wilmer on

Many people have misperceptions about what intellectual property (IP) protects, and some common IP misconceptions are debunked below. (1) Ideas Cannot Be Patented. Only inventions can be patented. The legal...more

One Step Forward, Two Steps Back For Software Patents At The Federal Circuit

by Fox Rothschild LLP on

In the past year, several Federal Circuit decisions defined situations in which software inventions could be eligible for patenting in the United States. However, two recent Federal Circuit decisions show that the path for...more

USPTO and EPO Examiners Discuss Key Considerations for Filing Effective Precision Medicine and Bioinformatics Applications in the...

At a symposium and webinar presented by Fenwick & West and Mewburn Ellis, we asked U.S. Patent and Trademark Office and European Patent Office examiners to provide perspective on the preparation and prosecution of patent...more

Federal Circuit Review - September 2017

by Knobbe Martens on

IPR Appellants Must Satisfy Article III Standing - In Personal Audio, LLC v. Electronic Frontier Foundation, Appeal No. 2016-1123, the Federal Circuit held that standing for an appeal to a federal court is based on the...more

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

by Womble Bond Dickinson on

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

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

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