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The Mayo/Alice framework for determining subject matter eligibility of patents under 35 U.S.C. §101 has long since antagonized both patent prosecutors and litigators alike, causing significant uncertainty in the realm of...more
In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more
The murky world of artificial intelligence-enabled inventions requires illumination. Did the USPTO’s recent guidance provide this much-needed illumination, or merely leave a trail of breadcrumbs? Some say the guidance is...more
On cross-appeals from a granted Fed. R. of Civ. Pro. 12(c) motion on subject matter eligibility, the US Court of Appeals for the Federal Circuit found that a patent directed to a method for “assist[ing] an investigator in...more
The US Patent & Trademark Office (PTO) issued a 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, which focuses on subject matter eligibility for artificial intelligence...more
Recognizing a need for clarity in evaluating patent eligibility under 35 U.S.C. § 101 for critical and emerging technologies, including artificial intelligence (AI) innovations, the U.S. Patent and Trademark Office (USPTO)...more
The precedential opinion reaffirmed that when a patentee consistently describes its present invention, its claims will be limited to such invention unless it meets a narrow exception. The decision reaffirmed that targeted...more
On February 9, in University of South Florida Board of Trustees v. United States, the Federal Circuit upheld royalty-free license rights of the U.S. government over a University of South Florida (USF) patent directed to...more
The evolution of artificial intelligence (AI) technologies has triggered a surge in the filings of patent applications, from machine learning models to applications of those models. See USPTO, Artificial Intelligence (AI)...more
Does recording an object’s physical properties to a blockchain render the resulting network (or method of using the same) patent-eligible? In Rady v. Boston Consulting Group, the Federal Circuit will hear oral arguments on...more
When we first wrote about the Patent Eligibility Restoration Act (PERA), I had no idea I would have the honor of being invited to testify before the Subcommittee on Intellectual Property of the Senate Judiciary Committee, but...more
The use of artificial intelligence (AI) to advance stem cell therapy has produced exciting results, with a key role in driving recent growth and innovation. Separated into three parts, this article provides an overview the...more
On June 22, 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2023, which seeks to clarify the jurisprudence surrounding 35 U.S.C. § 101. The current patent...more
The Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas under the Alice test for patent subject matter eligibility. In People.ai, Inc. v. Clari Inc. (Fed. Cir. 2023) U.S. App. LEXIS...more
The rapid rise of artificial intelligence (AI) and machine learning (ML) in biotechnology products and services is becoming a driver of the personalized medicine and health care sectors. While this integration can require...more
The law of unintended consequences provides that actions “always have effects that are unanticipated or unintended.” This folk wisdom holds true when it comes to the Patent Eligibility Restoration Act of 2022....more
In April 2022, judges in the Northern District of California issued several interesting decisions on patent subject matter eligibility under 35 U.S.C. § 101. Two were decided on Rule 12(c) motions for judgment on the...more
It is well known that in the U.S., abstract ideas, laws of nature, natural phenomena, and products of nature are all excluded from patenting under 35 U.S.C. § 101. This article briefly outlines various U.S. approaches to...more