News & Analysis as of

United States Patent and Trademark Office Software Patent-Eligible Subject Matter

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 -
BakerHostetler

Navigating Patent Eligibility in the Age of AI: Strategic Insights from the USPTO’s August 2025 Guidance

BakerHostetler on

The August 4, 2025 memorandum (Memo) issued by the U.S. Patent and Trademark Office (USPTO) clarifies how examiners should approach subject matter eligibility under 35 U.S.C. § 101. Importantly, the Memo provides critical...more

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

IP Hot Topic: The USPTO Publishes Reminders to Examiners on Evaluating Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) issued a memorandum on August 4, 2025, to provide reminders to Examiners in software-related arts, including artificial intelligence (AI) and machine learning, regarding...more

Foley & Lardner LLP

USPTO Clarifies Eligibility Examination Standards for Software Innovations

Foley & Lardner LLP on

On August 4, 2025, the U.S. Patent and Trademark Office (USPTO) released a new memorandum to patent examiners in Technology Centers 2100, 2600, and 3600, providing targeted reminders on evaluating subject matter eligibility...more

MoFo Tech

USPTO Internal Memo Suggests that Patenting AI Inventions May Become Easier

MoFo Tech on

The USPTO has issued an internal memorandum that may make it easier to patent software, in particular AI-related software inventions. In recent years, the USPTO has found certain software inventions to be patent-ineligible...more

Dickinson Wright

Key Takeaways from Claim Examples in the 2024 AI Patent Eligibility Guidance: A 3-Part Series

Dickinson Wright on

Part 1 - On July 17, 2024, the U.S. Patent and Trademark Office (the Office) released new guidance on subject matter eligibility, entitled “The 2024 Patent Subject Matter Eligibility Guidance Update Including on Artificial...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

WilmerHale

USPTO Issues Guidance Update on Subject Matter Eligibility of Artificial Intelligence

WilmerHale on

On July 17, 2024, the United States Patent and Trademark Office (USPTO) published guidance regarding the patent subject matter eligibility of claims concerning technology applicable to artificial intelligence (AI)....more

BakerHostetler

USPTO AI Examination Update Provides New Example Cases Analyzing Subject Matter Eligibility Under §101

BakerHostetler on

In a July 16 press release, The U.S. Patent and Trademark Office (USPTO) announced that it issued a guidance update on “patent subject matter eligibility to address innovation in critical emerging technologies including...more

Mintz - Intellectual Property Viewpoints

Is Your Blockchain Invention Patentable?

Blockchain is becoming central to more FinTech patent portfolios than ever – but it’s harder to obtain protection on blockchain than most other technologies. The US Supreme Court’s decision in Alice v. CLS Bank (2014)...more

Holland & Knight LLP

A Bad Day for this Patent Applicant: Travel Itinerary Applications Ineligible Under Section 101

Holland & Knight LLP on

In the case of In re Bongiorno, No. 2020-1835, 2021 WL 1997454, at *4 (Fed. Cir. May 19, 2021), patent applicant James Bongiorno appealed the Patent Trial and Appeal Board's (PTAB) finding that two of his patent applications...more

Fish & Richardson

Patenting Software: A Case Study in Overcoming Alice (Updated)

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

Knobbe Martens

Trends and Changes in View of the USPTO’s Updated Revised Guidance (Presentation)

Knobbe Martens on

Partner Mauricio Uribe hosted a webinar presenting, "Trends and Changes in View of the USPTO's Updated Revised Guidance." Topics Include: • Summary of the October 2019 Update to the Revised Guidance •...more

McDonnell Boehnen Hulbert & Berghoff LLP

Ex parte Smith (PTAB 2019)

Software Claims Survive Section 101 Challenge and Are Found to Be Directed to Patent-Eligible Subject Matter - In the U.S. Patent and Trademark Office, the Patent Trial and Appeal Board (PTAB) recently designated its...more

Knobbe Martens

Big Picture on Software Patent Eligibility: The Forces at Work

Knobbe Martens on

Much of the modern economy is driven by software development. Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and...more

Nutter McClennen & Fish LLP

USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

Over the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Intellectual Ventures I LLC v. Symantec Corp. -- Judge Mayer on the First Amendment

Decided September 30th, this Federal Circuit case is already making waves. The majority opinion seems to be at tension with the Court's outcome in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, but the real...more

McDonnell Boehnen Hulbert & Berghoff LLP

September Was a Good Month for Patent Eligibility in the District Courts

Anecdotally, there seems to be a loosening up regarding the application of § 101 by the District Courts. The 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int'l has been referred to as sounding a death knell for...more

McDonnell Boehnen Hulbert & Berghoff LLP

Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test

It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more

Troutman Pepper Locke

Seeking Shelter From the Patent Eligibility Storm: Does the DTSA Provide Sanctuary?

Troutman Pepper Locke on

For many charged with the development of intellectual property portfolios in the life sciences and software industries, navigating the stormy waters of patent eligibility has recently proven difficult. U.S. Supreme Court and...more

K&L Gates LLP

Abstract Ideas and the USPTO: Examiner Guidance Post Enfish and TLI

K&L Gates LLP on

On May 19, 2016, the U.S. Patent and Trademark Office issued a memorandum containing a summary of two recent Federal Circuit decisions along with a directive for how patent examiners should apply the holdings of the...more

BakerHostetler

USPTO Memo re Enfish v. Microsoft

BakerHostetler on

This is an update to my recent article about the Federal Circuit’s decision in Enfish v. Microsoft. In a memo to the Patent Examining Corps dated May 19, 2016, Deputy Commissioner Robert Bahr said that the Enfish...more

Dorsey & Whitney LLP

Federal Circuit Holds District Court Abstractness Analysis Too Abstract for Alice under 35 USC § 101

Dorsey & Whitney LLP on

Clients in the software space now have stronger arguments for subject matter eligibility, following the Federal Circuit decision in Enfish LLC v. Microsoft Corp. (May 12, 2016). The decision also touches on novelty,...more

Bradley Arant Boult Cummings LLP

The Government Whittles Away at Life Sciences Patents

The current U.S. Supreme Court has been noted for its hostility to patent holders in general, but the Supreme Court has been especially hostile to any sort of life sciences or software invention. The Court has attempted to...more

Foley & Lardner LLP

Patent Subject Matter Eligibility – Impact on Litigation and Prosecution

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Personalized medicine relies on diagnostic technologies to accurately evaluate a patient’s clinical or genetic signature to guide treatment decisions. Protecting innovation by patenting the diagnostic methods and tools that...more

Foley & Lardner LLP

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

Foley & Lardner LLP on

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...more

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