Posts in Patent Eligibility


Eligibility Rejections are Appearing in Greater Frequency Across all Computer Related Technology Centers

Four years after the Alice decision, we seem to just now be detecting the full impact of the decision. The initial response by the USPTO resulted in …
By Samuel Hayim & Kate Gaudry
18 hours ago 5

Iancu: ‘It is unclear what is patentable and what is not, and that can depress innovation’

Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director …
By Gene Quinn
3 days ago 21

Vanda v. West-Ward: This Time, Dosage Adjustment Claims are Patent Eligible Subject Matter

The Federal Circuit’s decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, No. 2016-2707, addresses the complicated topic of patent eligibility in the pharmaceutical space. Much of …
By Stephanie Sivinski
9 days ago 18

Director Iancu worries current state of Section 101 ‘weakens the robustness of our IP system’

Director Iancu: "But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, …
By Gene Quinn
10 days ago 32

WesternGeco’s Time-Bar Argument Fails to Save its Invalidated Patents

On appeal, WesternGeco argued 1) the Board erred as to its unpatentability determinations; and 2) the IPR proceedings were time-barred under 35 U.S.C. § 315(b) because ION acted in …

Patent Subject Matter Eligibility 101

The patents discussed below are all landmark inventions and were conceived by inventors inducted into the National Inventors Hall of Fame (NIHF). Would these ground-breaking inventions, that …
By Manny Schecter
17 days ago 31

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
1 month ago 3

USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are "well understood, routine or conventional." Examiners will be …
By Gene Quinn
1 month ago 22

Director Iancu tells Senate: 101 is an issue “we must all address”

"The PTO we will work to provide more concrete tests – to the extent possible given Supreme Court precedent," Director Iancu said speaking about patent eligibility. "This is …
By Gene Quinn
1 month ago 19

It is already too late, but we still have time

“If companies were to lobby to allow for more polluting most people would think that is unethical,” Lauder explained. But there are people lobbying to make it …
By Gene Quinn
1 month ago 31

Law Professors Urge CAFC to Uphold Cleveland Clinic Diagnostic Method Patents

A group of six patent law professors filed an amicus brief with the Court of Appeals for the Federal Circuit in Cleveland Clinic v. True Health Diagnostics. …
By Steve Brachmann
2 months ago 1

PTAB is Bogged Down by Eligibility Appeals

The low allowance rates and nearly blanket eligibility-rejection issuance in the business-method art units is not without consequence. Beyond disincentivizing innovation, the examination of business-method applications is …
By Samuel Hayim & Kate Gaudry
3 months ago 17

Patenting Antibodies: Obviousness Considerations

This article analyzes obviousness issues related to antibody patents at the Patent Trials and Appeal Board (PTAB) and in federal courts. We review several cases categorized by …

Is there a Light at the End of the Alice Tunnel?

Maybe I’m being too optimistic. But in a pair of decisions issued within a week of each other, Berkheimer v. HP and Aatrix Software v. Green …
By Meredith Addy
3 months ago 32

Berkheimer v. HP: Federal Circuit says patent eligibility a factual determination inappropriate for summary judgment

Berkheimer is also equally important, if not more important, because it stands for the proposition that questions of fact can and do underline patent eligibility determinations. This …
By Gene Quinn
3 months ago 15