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United States Patent and Trademark Office › Patent-Eligible Subject Matter › Patent Prosecution

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Womble Bond Dickinson

Developments in Patent Subject Matter Eligibility for Software-Related Inventions, in View of Guvera v. Spotify

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Innovators seeking patent protection for software inventions should be aware that all software inventions face patent-eligibility issues. Nevertheless, patent practitioners who are experienced in the art of software patent...more

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

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It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

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Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

Wolf, Greenfield & Sacks, P.C.

Practical Steps for Patent Prosecutors Addressing 101 Rejections

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For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Troutman Pepper Locke

Never Surrender? Recapturing Subject Matter in Reissue Proceedings

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Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fourth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

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

[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu (transcript)

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

Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more

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

[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu

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

Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more

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

Patent Prosecution Tool Kit: Update on Patent Subject Matter Eligibility & Abstract Ideas

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Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S....more

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

Patent Prosecution Tool Kit: Summary of Subject Matter Eligibility: Biotech/Pharma Inventions

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It has nearly been ten years since the Supreme Court’s landmark Mayo v. Prometheus (132 S.Ct. 1289 (2012)) decision, in which the Court established a two-prong test for determining patentable subject matter under 35 U.S.C. §...more

Faegre Drinker Biddle & Reath LLP

October 2019 Patent Eligibility Guidance Update

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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

Jones Day

Speech Recognition Patent Invalidated on Multiple Grounds in CBM Review

Jones Day on

The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more

Holland & Knight LLP

The PTAB Provides Guidance on Patent Eligibility Framework

Holland & Knight LLP on

Earlier this month, the Patent Trial and Appeal Board (PTAB) designated as informative four of its decisions applying the newest patent eligibility framework. This new eligibility framework, based on the United States Patent...more

Mintz - Intellectual Property Viewpoints

Help from the PTAB in Applying USPTO § 101 Subject Matter Eligibility Guidance

Mintz - Intellectual Property Viewpoints on

In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying...more

Mintz - Intellectual Property Viewpoints

Director Iancu Roundtable with BIOCOM San Diego

Mintz - Intellectual Property Viewpoints on

Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy. He has made...more

Knobbe Martens

Cleveland Clinic II: Has the Federal Circuit Undermined Patent Office Guidance and Eliminated an Important Tool for Patenting...

Knobbe Martens on

On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding...more

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

Global Patent Prosecution Newsletter - April 2019

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

Patent eligibility continues to be a hot topic in intellectual property law, and in our April issue of the Global Patent Prosecution newsletter, we look at three of the major forums impacting this area of IP. In our first...more

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

Global Patent Prosecution Newsletter - February 2019

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

USPTO’s New Guidance on Subject Matter Eligibility - Few areas of patent law are as unsettled as subject matter eligibility. To improve clarity, consistency, and predictability, the USPTO recently published new guidance on...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

Nutter McClennen & Fish LLP

New USPTO §101 Guidelines Adopt Policies Favorable to Patent Applicants

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Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more

Jones Day

USPTO Releases New Guidance on Patent Subject Matter Eligibility

Jones Day on

The Situation The legal uncertainty surrounding patent subject matter eligibility under Section 101 of the United States Code ("35 U.S.C. § 101") has been the subject of much attention, as it has become difficult for...more

Snell & Wilmer

Proper Prosecution of a U.S. Utility Patent Application

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I. Introduction. “Prosecution” of a patent application is the process by which an application moves through the United States Patent and Trademark Office (“USPTO”) after being filed. Prosecution is often a more lengthy and...more

Fenwick & West LLP

Still No Path Out of the 101 Swamp?

Fenwick & West LLP on

Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101. Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional...more

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

Global Patent Prosecution Newsletter - November 2018

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Technology Spotlight - Patenting Blockchain Technology - Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more

Fenwick & West LLP

Seven Questions for the USPTO Following the Berkheimer Memorandum

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Hot on the heels of the Federal Circuit’s April ruling in Berkheimer v. HP, the U.S. Patent and Trademark Office issued a memorandum that, if adopted as part of the Manual of Patent Examination Procedures, would provide...more

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