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United States Patent and Trademark Office › Preemption

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 -
Akerman LLP - Marks, Works & Secrets

Lanham Act Preemption of State Law Where Cannabis Trademarks Are At Issue

Akerman LLP - Marks, Works & Secrets on

As cannabis products become legal in more and more states, commercial interest grows in protecting the trademarks associated with those products.  The United States Patent and Trademark Office has maintained its refusal to...more

Holland & Knight LLP

D. Delaware Invalidates Patent Directed to Onsite Data Backup; Discusses Role of Evidence, USPTO and Preemption

Holland & Knight LLP on

The District of Delaware recently found a patent directed to onsite data backup to be abstract and ineligible for patent protection. The court's discussion went beyond the standard Alice inquiry, and touched on the roles of...more

Blank Rome LLP

Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections

Blank Rome LLP on

Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not...more

Farrell Fritz, P.C.

Federal v. State Trademark Registration for Marijuana-Related Goods and Services

Farrell Fritz, P.C. on

Despite numerous states having legalized medical marijuana, and a handful of others having legalized marijuana for recreational use, it still remains impossible to obtain a U.S. federal trademark registration for marijuana...more

Foley & Lardner LLP

How Will The Supreme Court Choreograph The Biosimilar Patent Dance?

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On April 26, 2017, the Supreme Court heard oral arguments in Amgen v. Sandoz, where the parties have asked the Court to interpret two of the biosimilar patent dance provisions of the Biologics Price Competition and Innovation...more

Ward and Smith, P.A.

The Latest Memorandum from USPTO on Subject Matter Eligibility Provides Additional Guidance for Post-Alice Prosecution

Ward and Smith, P.A. on

On November 2, 2016, the United States Patent and Trademark Office ("USPTO") issued a memorandum to Examiners ("Memorandum") updating the USPTO's May 2016 subject matter eligibility ("SME") guidance in light of recent...more

Fenwick & West LLP

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

Fenwick & West LLP on

On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2016

Fenwick & West LLP on

Mean Girls v. The Right of Publicity: Lessons Learned From the Lohan and Gravano Lawsuits - On September 1, 2016, a New York appellate court ended two closely watched right of publicity lawsuits brought by Lindsay...more

Bracewell LLP

Patentee's Day of Thanks Comes in Early November: Assessment of the USPTO's Recent Memorandum Regarding Patent Eligibility for...

Bracewell LLP on

A recent U.S. Patent & Trademark Office (USPTO) memorandum to the Patent Examining Corps, in combination with precedential cases from the Federal Circuit, provides positive guidance to owners of software patents and patent...more

Fenwick & West LLP

More Lessons From McRo

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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

Sheppard Mullin Richter & Hampton LLP

Federal Circuit is In Sync with Patent’s Validity Under Section 101

Sheppard Mullin Richter & Hampton LLP on

The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract...more

Fenwick & West LLP

McRo: Preemption Matters After All

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The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D...more

McDermott Will & Emery

ANDA Update - October 2015

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Federal Circuit Interprets Statutory Requirements for Biosimilar Regulatory Pathway - Amgen Inc., v. Sandoz Inc., (Fed. Cir. July 21, 2015): In a case of first impression, the U.S. Court of Appeals for the Federal...more

Fenwick & West LLP

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

Fenwick & West LLP on

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

McDonnell Boehnen Hulbert & Berghoff LLP

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: NYIPLA

McDonnell Boehnen Hulbert & Berghoff LLP on

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

McDonnell Boehnen Hulbert & Berghoff LLP

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: IPO

McDonnell Boehnen Hulbert & Berghoff LLP on

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

Burns & Levinson LLP

One Year After Alice

Burns & Levinson LLP on

It has been more than a year since the Supreme Court issued its decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Although a number of software patents have been invalidated for reciting...more

McDermott Will & Emery

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

McDermott Will & Emery on

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

McDonnell Boehnen Hulbert & Berghoff LLP

July 2015 Update on Subject Matter Eligibility

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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

Foley & Lardner LLP

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

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On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

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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

Fenwick & West LLP

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 2)

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The Preemption Requirement - Preemption is the core concern that drives the Court’s “exclusionary principle”. The Supreme Court in Alice stated...more

McDonnell Boehnen Hulbert & Berghoff LLP

SAP America, Inc. v. Versata Development Group, Inc. (P.T.A.B. 2013)

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In an example of judicial reasoning rolling downhill, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has struck down claims directed to a computer-implemented business method as failing to meet...more

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