Podcast: Patentable Subject Matter in 2019
Drafting Software Patents In A Post-Alice World
Polsinelli Podcasts - Hear How the SCOTUS Ruling May Impact Patent-Eligible Subject Matter for Software
The Federal Circuit recently issued a decision in Recentive Analytics, Inc. v. Fox Corp., invalidating the patent claims at issue as directed to ineligible subject matter under 35 U.S.C. § 101. In what it noted was a case of...more
The patent world tends to think that the Supreme Court’s framework in Alice is a template for determining the eligibility of software and business method inventions. Under 35 U.S.C. § 101, abstract ideas are not eligible for...more
Earlier this month in Luxer Corp. v. Package Concierge, the U.S. District Court for the District of Delaware found that U.S. Patent No. 11,625,675 was ineligible under Section 101. In assessing the defendant's motion to...more
The patent landscape for artificial intelligence is poised to undergo significant transformation. Originally published in Law360 - August 23, 2024....more
It's been a while since I last posted, and I apologize for that. (If interested, here's an alert about what's kept me away: a CFAA trial we wrapped up in late July.) But I am back, so let's look at the latest on the Section...more
There has been a flurry of activity in Illinois over the last few months with regards to quantum computing. For example, the state enacted a package of bills that provides tax incentives for quantum computing development,...more
Under the direction of President Biden’s executive order on artificial intelligence (AI), the United States Patent and Trademark Office (USPTO) issued a guidance update on the subject matter eligibility analysis “to promote...more
As required by President Joe Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the United States Patent and Trademark Office (“USPTO”) issued the Guidance on Patent...more
The United States Patent and Trademark Office (USPTO) recently published new guidance on subject-matter eligibility as related to Artificial Intelligence (AI), opening a written comment window to respond with a deadline of...more
We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more
On June 6, 2023, the Senate Judiciary Committee's Subcommittee on Intellectual Property introduced a Bill entitled “Patent Eligibility Restoration Act of 2023” (PERA) aiming to amend the law relating to patent subject matter...more
The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions,...more
The evolution of graphical user interfaces parallels the evolution of computing technology itself. As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more
If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on. Subject matter eligibility is a fundamental requirement for an invention to be...more
This article is the first of a five-part series of articles dealing with what patentability of machine learning looks like in 2019. This article begins the series by describing the USPTO’s 2019 Revised Patent Subject Matter...more
This article discusses challenges in prosecuting bioinformatics patent applications before the United States Patent and Trademark Office (USPTO). Bioinformatics generally refers to an interdisciplinary field in which computer...more
Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more
Companies involved in mobile checking should watch case closely - The United States Automobile Association (USAA) owns a portfolio of patents aimed at mobile check deposit technology. One group of these patents is targeted...more
The District of Delaware recently found a patent directed to onsite data backup to be abstract and ineligible for patent protection. The court's discussion went beyond the standard Alice inquiry, and touched on the roles of...more
Changes in patents are afoot that will have a significant effect on the insurance and financial industries. Although business method patents have been the pariah of the patent industry for the past few years...more
In 2014, the United States Supreme Court handed down its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, which significantly altered the patentability of software, business methods,...more
A divided panel of the US Court of Appeals for the Federal Circuit affirmed the district court, finding that a claimed method for monitoring and analyzing a computer network was directed to an improvement in computer...more
Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more
In January, the USPTO announced it would seek comments on the new Guidance it had published on patent subject matter eligibility. We have previously discussed this Guidance and won’t repeat ourselves here. ...more
The lack of clarity in the law with regards to patent subject matter eligibility under 35 U.S.C. § 101 has made it difficult for patent attorneys to advise their clients with regards to patent protection for software...more