Posts Tagged: patentability requirements


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
3 days ago 11

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
4 days ago 27

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
10 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
11 days ago 32

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
18 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

The CAFC Split Non-precedential Decision in Exergen v. Kaz Raises Interesting Issues About Eligibility Determinations

In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods …
By Michael Cottler & David Zimmer
2 months ago 2

Federal Circuit Opens the Door to Extrinsic Evidence in Support of Patent Eligibility

A casual observer may read the Aatrix dissent, or cases cited therein, to say it is improper to consider extrinsic evidence.  In particular, the dissent quotes Secured …
By James Carmichael
2 months ago 3

Federal Circuit Decisions Breathe New Life Into Alice Responses by Patent Prosecutors

While most commentary to date has focused on the implications for litigation, two recent Federal Circuit decisions have promising implications for patent prosecutors struggling to overcome conclusory …

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

Breaking Through on Patent Eligibility, From Drafting to Litigation

Over the last five weeks there has been a seismic shift in the way the Federal Circuit views the resolution of patent eligibility issues during patent infringement …
By Gene Quinn
3 months ago 0

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

Factual Allegations on Inventive Concept Preclude Dismissal of Complaint Under § 101

In Atrix Software v. Green Shades Software, Aatrix sued Green Shades for infringement, and Green Shades moved to dismiss. The district court granted the motion, holding: (1) claim 1 …

Aatrix Software v. Green Shades Software: Pleading must be taken as true on 101 motion to dismiss

"The Aatrix ruling is significant because when deciding a motion to dismiss all factual allegations made by the plaintiff (i.e., the patent owner) in the complaint …
By Steve Brachmann
3 months ago 6

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