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Tag Archives: 35 USC §101
US Patents – Eligible Subject Matter – Top Tips for Prosecution (Finnegan Review Seminar)
One of the sessions at the recent Finnegan Patent Case Law covered the issue of patent eligible subject matter and the recent Interim Guidelines for Examination at the USPTO (more detail on which can be found in IPcopy’s earlier post here).
The session again highlighted the divergence in two of the Interim Guidelines examples between what might be expected in Europe and the position stated in the Guidelines (see Examples 2 and 5 in the previous IPcopy post). Also discussed in this session were some top tips to bear in mind when prosecuting software subject matter in the US. (more…)
USPTO Guidance on Subject Matter Eligibility: Abstract Idea Examples
The USPTO issued Interim Guidance on patent subject matter eligibility back in December last year. As well as the interim guidance itself a number of “Nature-based Product” examples were released and a number of “Abstract idea” examples were promised. A couple of weeks ago the USTPO updated their guidance to include the Abstract Idea examples which can be found here. In this post IPcopy takes a quick gander through the new examples to see what light, if any, they shed on the new guidance. (more…)
USPTO Guidance on Subject Matter Eligibility
The USPTO has issued Interim Guidance on Patent Subject Matter Eligibility for US Examiners determining eligibility under 35 U.S.C. 101 in view of the recent decisions in Alice, Myriad and Mayo. The guidance is interim in nature only and the USPTO expects to update it in response to feedback. Comments may be submitted to the USPTO until 16 March 2015. (more…)
USPTO starts lobbing rejections from Room 101 (is this the post-Alice situation?)
Are USPTO Examiners beginning to issue blanket “Alice” objections against software patent applications? How should such patent applications be presented? How might this develop going forward? And, what should we be doing (if anything) to address it?
An eagle-eyed colleague here at Keltie (thank you Peter Kent) spotted a discussion online last week that suggested that, in the wake of the Alice v CLS Bank decision from the Supremes, Examiners at the USPTO might be beginning to issue blanket objections under 35 U.S.C. 101 to patent applications containing software-implemented inventions.
IPcopy reached out to William Jividen at Dinsmore & Shohl LLP in the US to see if this was the case. The discussion below has been distilled from Bill’s comments and other comments seen online. Any mistakes or inaccuracies may be attributed solely to me!
Alice v CLS Bank: a serving of Bilski with lashings of Mayo
The Supremes have just handed down the Alice Corp v CLS Bank decision (here). The claims have been held to relate to a patent-ineligible abstract idea and so are not patent eligible under §101. The decision references the Bilksi case and also the framework described in Mayo v Prometheus. There doesn’t seem to be a whole heap of guidance on first reading on what constitutes an abstract idea. Merely reciting the presence of a computer in the claims is not enough though.
More analysis (much more analysis) is sure to follow shortly!
Mark Richardson 19 June 2014
Alice v CLS Bank – a view from a US perspective
Last year we noted that the US Supreme Court is to take a crack at the Alice v CLS Bank Intl case (see here). Shortly after that post we reported on a CIPA seminar “Patentable subject matter in the US” in which Seth D. Levy of Nixon Peabody gave a good overview of what’s going on with patent subject matter (35 USC §101) in the US.
Seth has subsequently provided some further thoughts on the Alice v CLS case. If you’re interested in hearing what US practitioners think of the referral, what we can expect next and how the Court might rule then please see Seth’s comments below: (more…)
Patentable subject matter in the US
On 20th September 2013, as part of a CIPA series of webinars, Seth D. Levy (Nixon Peabody) gave a very clear presentation on the state of play with respect to patentable subject matter cases in the US.
Before we get into the review of the presentation it is worth pointing out that although the focus of the talk was on medical diagnostic claims (“a challenging area these days in the US”), there is uncertainty whether there may be wider implications for the software and business method fields in the US.
As such, and speaking as a “software” patent attorney, the subject matter of this presentation should be of interest to all patent attorneys and other interested individuals regardless of their technical field.
The talk covered the following general areas: background to the current state of case law in the US (essentially the Supreme Court prior to Myriad Genetics); Myriad and its aftermath; USPTO Guidance; and prosecution tips. (more…)
IPcopy 