In June 2014, the U.S. Supreme Court handed down Alice Corp. v. CLS Bank Int'l, establishing a now-infamous two-step, judicially-imposed test for patent subject-matter eligibility that narrowed the broad statutory eligibility...more
The last 11 years have taught us much about the Federal Circuit; namely, that a majority of the judges simply do not seem to appreciate software. Given the statements that several have made in opinions, one might be able to...more
For the last several years, patentees and patent practitioners have been waiting for the Federal Circuit to weigh in on the patent eligibility of machine learning models. There was an expectation that, like any other...more
For most of the last two decades, the U.S. Patent and Trademark Office offered its electronic filing system (EFS), through which practitioners could file patent applications and related prosecution documents, and private...more
The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it." There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure...more
Over the last two years, we have studied the examiner affirmance rates of the Patent Trial and Appeal Board (PTAB) for § 101 rejections. The PTAB is the administrative court of the U.S. Patent and Trademark Office (USPTO)...more
As required by President Biden's Executive Order 14110 ("Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence"), the U.S. Patent and Trademark Office has published an update to its subject matter...more
Any patent attorney who has been in the business for more than a few years understands from experience that some USPTO examiners are tougher than others. This should not be surprising, as each examiner is an individual who...more
To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following....more
To help you stay on top of the latest news, our AI practice group has compiled a roundup of the developments we are following. Last week, the US House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet...more
On February 27, 2024, the U.S. Patent and Trademark Office published its Updated Guidance for Making a Proper Determination of Obviousness ("Guidance") in the Federal Register. The stated goal of the Guidance is...more
There’s a lot happening in the world of AI. To help you stay on top of the latest news, we have compiled a roundup of the developments we are following. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and...more
On February 12, 2024, the United States Patent and Trademark Office (USPTO) issued guidance clarifying the role of artificial intelligence (AI) in the inventorship of patents. The document exhibits a nuanced approach to the...more
They may have known that it was coming. Over the last several weeks, lobbying organizations and high-tech blogs have been slowly introducing the same old false, misleading, and deceptive arguments against patent law. These...more
Patent eligibility is broken.
The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more
The patent statute requires that, to be patentable, the subject matter of an invention must be at least one of a process, machine, article of manufacture, or composition of matter. It is hard to find examples of things that...more
On April 18, 2023, we submitted a Supreme Court amicus brief expressing our encouragement for the justices to rule on the question of whether it is proper for an artificial intelligence (AI) to be an inventor on a patent...more
The U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs). Each TC is dedicated to one or more general technical fields. In some cases, one TC may include two or more unrelated...more
The interpretation of 35 U.S.C. 101 has been in flux for over a decade. Please join MBHB Partner Michael Borella, Ph.D., as he discusses its latest iteration, how patent eligibility is currently viewed by the USPTO and...more
There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1] This has resulted in the general understanding that there are "easy" examiners and "tough"...more
In Liu Cixin's novel The Three Body Problem, the characters create a "computer" from human labor. Millions of people serve as "bits" and hold up flags to indicate whether they represent 0s or 1s. These individuals are given...more
On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more
The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012. As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more
In an ideal world, patent eligibility would be a simple, clear, and non-controversial inquiry. After all, the purpose of 35 U.S.C. § 101 is to inform the public which types of inventions are eligible for patenting and which...more
Republican Senator Thom Tillis of North Carolina has released a new proposal to reform the text of 35 U.S.C. § 101. The Senator's last effort in doing so died on the vine in 2019, purportedly due to stakeholders being too...more