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This article compares amendment of patent applications before the USPTO and the European Patent Office (EPO), focussing on the differences in law and practice between these jurisdictions. Adaptation of a PCT application for regional phase entry in each jurisdiction is also discussed. References are made to the EPO Guidelines, which is the main source for European Patent Office practice. Some guidance is also provided on differences between claim interpretation in Europe and the US. (more…)
The USPTO issued a new memo to patent examiners on the subject of software patent eligibility on 2 November 2016 following recent precedential decisions in McRo Inc v Bandai Namco Games America and BASCOM Global Internet Services v AT&T Mobility in the Federal Circuit. A further recent precedential, decision Amdocs (Israel) Ltd v Openet Telecom, will be the subject of a further memo. As always the USPTO has updated its subject matter eligibility page on its website. (more…)
Today on IPcopy we have a review courtesy of Wolf, Greenfield & Sacks, P.C. of the Cuozzo v Lee case in the US.
On June 20, the U.S. Supreme Court issued its decision in Cuozzo v. Lee, the first case in which the Court considered the Patent Office’s new administrative reviews of patents. The Court’s decision left in place procedures that critics have charged weigh too heavily in favor of patent challengers and make it too easy to cancel patents. The decision means that these new post-grant proceedings will continue much as they have since 2012, under the same terms that have made them a popular (and lower-cost) adjunct to patent litigation. (more…)
The US software patent environment is very different in the year following Alice v. CLS than in the year after State Street v. Signature . It was expected that when the Supreme Court finally had to take a view on eligibility of subject matter, things would change. After years of waiting for the other shoe to drop, it did (in a strange multi-stage process involving Bilski v. Kappos, Mayo v. Prometheus and Alice) – but nobody seems terribly sure where it landed. (more…)
The USPTO has recently issued an update to their training materials and guidance on subject matter eligibility. The new materials, which may be found here, contain a memo to US patent Examiners and some more examples in the life sciences area. There is an open ended comment period for the general public to make comments about patent subject matter eligibility topics (comments may be sent to firstname.lastname@example.org and will be uploaded for viewing onto the USPTO website). (more…)
A recent webinar about addressing section 101 issues in US patent prosecution following the Alice decision provided a handy overview of the best way to avoid and counter Alice objections and also helpfully highlighted the relevant USPTO patent eligibility examples to look at when drafting claims to different types of invention. A summary of some of the highlights of the webinar is presented below: (more…)
The US patent prosecution process can become a bit confusing once the application reaches the “final” Office Action stage. The “final” nature of the Office Action (OA) means that the Examiner has rejected the claims at least two times. However, it is by no means the end of the process with after-final amendments, appeal and a request for continued examination often being on the cards.
The various options available to the applicant were the subject of a recent webinar that IPcopy attended and what follows is a summary of the webinar (any errors clearly being the work of the author of this post!). (more…)
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…)
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…)
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!