Posts Tagged: Patentability
How the New USPTO Director Can Impact Patent Subject Matter Eligibility and Post-Patent Grant Challenge Proceedings
As the challenge proceedings and the Patent Trial and Appeal Board mark their fifth anniversary, we should reflect on whether they have achieved their intended purpose. About …
Board cannot shift burden of proving patentability to applicant, must articulate reasoning
The Federal Circuit vacated and remanded the Board’s decision, finding that it “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly …
Federal Circuit Reverses Rule 12(b)(6) Eligibility Dismissal Under First Step of Alice
In Visual Memory LLC v. NVIDIA Corp., a district court dismissed a patent infringement complaint under FRCP 12(b)(6) for failure to state a claim, because the patent …
Placing limits on innovation may exclude great inventions before it’s known what has been excluded
Since U.S. patents are granted with exclusive right to exclude, the only way to realize values of inventions is licensing, suing for damages or both. This …
Federal Circuit says computer memory system claims patent eligible, not abstract
The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice …
The Problem of Obviousness
The overly inclusive nature of obviousness interpretations has led to problems. First, with an overly broad view of obviousness, patent applicants are encouraged to flood patent examiners …
The Problem of Reducing Patentability to Novelty
Ironically, judicial decisions on patent eligibility tend to depend on inventiveness, with tests of originality that tend to refer to novelty, reducing the issue of patentability to …
Revising Section 101 of the Patent Act: What’s at Stake?
These revisions favor patent owners, according to Palmer, but not everyone is supportive. For instance, Bilski, Mayo, Myriad, and Alice have given several accused infringers an additional …
Patent Bar Groups Propose Legislation to Fix Patent Subject Matter Eligibility Problems
Over the past few months, several of the major intellectual property organizations have developed proposed legislative fixes to patent subject matter holdings by the courts. The American …
Parties Agreement to Settle Issues Does Not Extinguish Board’s Ability to Determine Patentability
However, what if the Board refuses to terminate an IPR despite a joint request by both parties based on a settlement and proceeds to a final written …
Patentability: The Adequate Description Requirement of 35 U.S.C. 112
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough …
Federal Circuit says Cleveland Clinic Diagnostic Patents Ineligible Under § 101
The Cleveland Clinic’s diagnostic or “testing” patents at issue dealt with a process by which an enzyme was measured and correlated against known levels of the …
Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
The nonobviousness requirement is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not …
Patentability: The Novelty Requirement of 35 U.S.C. 102
Essentially, §102 requires the patent applicant to demonstrate that the invention is new. In essence, in order for a claimed invention to violate this "newness" requirement it must …
Alice Who? Over Half the U.S. Utility Patents Issued Annually are Software Related!
I have always argued that software patent eligibility is a must in a country where patent rights are guaranteed by the Constitution. That is, all fields of …
