William Morriss

has spent the past fifteen years helping clients, from startups to Fortune 500 companies, navigate complex issues surrounding law and technology and obtain protection for their inventions. He is a passionate advocate for the value of patents in business, having seen the impact in the success of his clients and his own work as an entrepreneur. William is Senior Technology Advisor at IP Toolworks, a company which he founded with the goal of helping attorneys respond to rejections from the USPTO more effectively by leveraging a wealth of publicly available but previously inaccessible information.

For More information or to contact William, please visit his Firm Profile Page.

Recent Articles by Defanging Descriptive Material Rejections

Defanging Descriptive Material Rejections

Non-functional descriptive material is a throwback to an earlier time. Historically, the non-functional descriptive matter doctrine was used by examiners to argue that limitations related to the content of information should be given little to no patentable weight. However, current subject matter eligibility jurisprudence provides tools to simply treat content-based inventions as ineligible (e.g., Electric Power Group, LLC v. Alstom S.A.), and so it is not clear that non-functional descriptive material rejections should continue to play a role in examination. Nevertheless, the doctrine still exists, and so this article presents three examples illustrating how you can respond to non-functional descriptive material rejections when they arise in your practice.

In re Stanford: Ruined by a Processor and a Memory

Computer boilerplate – such as including “a processor and a memory” in claims – is commonplace in patent applications. However, the recent case of In re Stanford shows that this can be a double-edged sword, having the potential to both undermine an application and to ruin an opinion that could otherwise have shed light on several of the thorniest open questions in patent eligibility jurisprudence. Skeptical that such a common practice could be so counterproductive? Read on.

Kentucky Steps Up When Patents Step Out for Insurance Innovation

Insurance is a highly regulated field. New approaches to innovation are sorely needed. The need for innovation itself is undeniable as the tech world runs head long into the world of insurance. For example, the regulation of insurance is hundreds of years in the making and steeped in arcane regulation. However, the patent system—ostensibly an engine of innovation—has been notably hostile to insurance innovations, especially since the Supreme Court’s 2014 decision in Alice Corp. Pty Ltd. v. CLS Bank Intern. Indeed, the USPTO’s latest guidance on applying Alice specifically lists insurance as a type of fundamental economic practice that should be treated as unpatentable. While the federal patent system may be restricting the protection available for insurance innovations, there are other ways of supporting innovation, and Kentucky is leading the way with its recently passed regulatory sandbox for insurance innovation.