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
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
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
Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated...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 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
In a ruling that should surprise absolutely nobody, the Federal Circuit rapidly scrapped an appeal of a PTAB decision that affirmed a 35 U.S.C. § 101 rejection of a business method claim. This is the latest in a series of...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
Self-similarity is a characteristic found in many physical, natural, and human-made systems. In short, it describes a class of structures or behaviors that are at least partially-invariant to time or scale. Thus, these...more
Can a prior art reference with an error be considered to be a disclosure of the erroneous teaching? A Federal Circuit panel split over this issue, with their disagreement largely based on how apparent the error would be to...more
The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings. While the USPTO has made incremental improvements in its...more
In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and...more
Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101. Patent holder MyMail was able to...more
The legal concept of obviousness is tricky. A claimed invention is found obvious if the prior art teaches or suggests all claim limitations and one of ordinary skill in the art would have been motivated to combine the...more
One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer...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
11/2/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Examination Procedures ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
In a post-truth world, it is more tempting than ever to evaluate data based on gut instinct, intuition, and anecdotal evidence. It is thus refreshing when results of a robust statistical analysis are published, even if the...more
In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice...more
3/3/2020
/ Abstract Ideas ,
Appeals ,
Bilski ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Legal History ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
USPTO
Over five and a half years on from the Supreme Court's Alice vs. CLS Bank ruling, patentees, patent professionals, judges, and USPTO personnel are still wrestling with what it means for an invention to be eligible for...more
2019 Patent Trial and Appeal Board Key Practice Updates: A Year in Review -
2019 has been an active year for procedural changes in the Patent Trial and Appeal Board (“PTAB”). These changes include not only the PTAB’s...more
Early today, October 17, 2019, the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the...more
On July 1, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) designated four of its recent 35 U.S.C. § 101 decisions as informative. Each of these decisions came down after and applied...more