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Patent-Eligible Subject Matter › United States Patent and Trademark Office › Corporate Counsel

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
Baker Botts L.L.P.

Federal Circuit Refines Section 101 Eligibility as Applied to Machine Learning Patents

Baker Botts L.L.P. on

On April 18, 2025, the United States Court of Appeals for the Federal Circuit ("Federal Circuit") issued a significant decision in Recentive Analytics, Inc. v. Fox Corp., affirming dismissal, by the District Court of...more

Fish & Richardson

Protecting Innovation in an AI-Powered Age: Patents

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With the advent of generative artificial intelligence (or “GenAI”), many companies have begun to shift their innovation strategies to incorporate and rely on GenAI tools. These tools can be powerful drivers of technological...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Paul Hastings LLP

Artificial Intelligence Patents: Reflections on Recent US v EU v UK Approaches

Paul Hastings LLP on

The rapid increase in innovation and popularity surrounding AI, its capabilities and seemingly endless applications has created a technological revolution, the magnitude of which hasn’t been seen for decades. This has led to...more

MoFo Tech

USPTO Guidance: Artificial Intelligence Inventions That Solve A Technical Problem Eligible For Patenting

MoFo Tech on

The U.S. Patent and Trademark Office (USPTO) has issued guidance regarding patent eligibility with respect to patenting artificial intelligence (AI) inventions. See an overview of the eligibility test applied by the USPTO....more

Mintz - Intellectual Property Viewpoints

Understanding the 2024 USPTO Guidance Update on AI Patent Eligibility

Mintz - Intellectual Property Viewpoints on

The United States Patent and Trademark Office (USPTO) issued an important update to its guidance on patent subject matter eligibility under 35 U.S.C. § 101, specifically focusing on artificial intelligence (AI) and other...more

Baker Donelson

A Baker's Dozen of Patent Law Developments for 2024

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The world of intellectual property law is always changing, and it can be difficult to keep up. Here are 13 developments in patent law so far in 2024 to help you stay in the know....more

Sheppard Mullin Richter & Hampton LLP

USPTO Issues AI Subject Matter Eligibility Guidance

Sheppard Mullin Richter & Hampton LLP on

The USPTO has published updated patent eligibility guidance (effective July 17, 2024) for AI-related inventions to help determine subject matter eligibility under 35 § U.S.C. 101. This guidance is timely as roughly 20% of all...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

McDonnell Boehnen Hulbert & Berghoff LLP on

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

McDonnell Boehnen Hulbert & Berghoff LLP

The Supreme Court Sidesteps America's Patent Eligibility Crisis

McDonnell Boehnen Hulbert & Berghoff LLP on

In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...more

McDermott Will & Schulte

2022 IP Outlook Report: The Developments Shaping Patent Law

McDermott Will & Schulte on

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Hogan Lovells

Judge signals that artificial intelligence cannot be named as an inventor in the United States

Hogan Lovells on

The ongoing artificial intelligence (“AI”) inventorship case of Thaler v. Iancu, et al. (No. 1:20-cv-00903) took another turn on April 6th when U.S. District Court Judge Leonie Brinkema of the Eastern District of Virginia...more

BakerHostetler

How Administrative Law Became the Hottest Topic in Patent Disputes at the Federal Circuit

BakerHostetler on

What comes to mind when you think of “hot topics” in patent law? Subject matter eligibility? Obviousness? Damages? Quietly, administrative law has moved to the top of the list of issues that consume the attention of the Court...more

Fenwick & West LLP

New USPTO Study Examines the Effects of Alice and USPTO Guidelines on Patent Eligibility

Fenwick & West LLP on

On Thursday, April 23, the USPTO released a new study entitled “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International.” The report illustrates the dramatic impact of two developments...more

Faegre Drinker Biddle & Reath LLP

Artificial Intelligence at the Patent Trial and Appeal Board

Faegre Drinker Biddle & Reath LLP on

Since the United States Patent and Trademark Office (USPTO) released its 2019 Revised Patent Subject Matter Eligibility Guidance, the Patent Trial and Appeal Board (PTAB) has published over 50 decisions that apply the...more

Sheppard Mullin Richter & Hampton LLP

Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 1

Sheppard Mullin Richter & Hampton LLP on

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

Fish & Richardson

Patenting Software: A Case Study in Overcoming Alice

Fish & Richardson on

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

BakerHostetler

The Federal Circuit Deals Another Blow to Diagnostic Method Patents

BakerHostetler on

In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - February 2019: 5 Things To Know About USPTO’s New Eligibility Guidance

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidance on Patent Eligibility, seeking to improve the overall clarity, consistency, and predictability of patent eligibility analysis performed by...more

Schwabe, Williamson & Wyatt PC

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

Schwabe, Williamson & Wyatt PC on

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more

Neal, Gerber & Eisenberg LLP

Software Patents Aren’t Inherently Abstract—Patent Appeals Court Clarifies and Enhances Software Patent Eligibility

Neal, Gerber & Eisenberg LLP on

In Enfish, LLC v. Microsoft Corp., the U.S. Court of Appeals for the Federal Circuit reversed a California district court’s summary judgment that two software patents were directed to an “abstract idea” without...more

King & Spalding

Patentable Subject Matter in the Life Sciences: New USPTO Guidance Impacts Diagnostic Methods and Natural Products

King & Spalding on

The United States Patent and Trademark Office issued on May 6, 2016, updated guidance to its patent Examiners that would have an impact on patent applications covering diagnostic methods and natural products. The new...more

BakerHostetler

Sequenom Asks the Supreme Court to Clarify the Limits on Section 101

BakerHostetler on

On March 21, 2016, Sequenom filed a writ of certiorari with the U.S. Supreme Court, asking the Court to provide clarification regarding the limits of 35 U.S.C §101 as it relates to patent eligibility of diagnostic tests....more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Won’t Review USPTO’s Alice Guidelines

Sheppard Mullin Richter & Hampton LLP on

On March 10, 2016, the Federal Circuit ruled that it cannot review the U.S. Patent and Trademark Office’s patent-eligibility guidelines to examiners on how to apply the Supreme Court’s Alice ruling. The appeals court held...more

Mintz - Intellectual Property Viewpoints

USPTO “Forecloses” on Mortgage Processing Patent under Alice

Mintz - Intellectual Property Viewpoints on

Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board. According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to...more

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