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New Guidance Patent Applications Patent Examinations

Dorsey & Whitney LLP

Patent Office Publishes Subject Matter Eligibility Guidance

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On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more

Fenwick & West LLP

Inside USPTO’s AI Subject Matter Eligibility Guidance

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In accordance with President Biden’s Executive Order on the use of Artificial Intelligence (AI) in October 2023, the U.S. Patent and Trademark Office (USPTO) has issued new subject matter eligibility guidance relating to AI...more

Foley & Lardner LLP

USPTO Issues Updated Guidance on Obviousness

Foley & Lardner LLP on

For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more

Goodwin

The USPTO’s Increasing Focus on FDA Submissions and the Duty of Disclosure

Goodwin on

​​​​​​​The United States Patent and Trademark Office (USPTO) imposes a Duty of Disclosure, Candor and Good Faith (Duty of Disclosure) on all individuals associated with the filing and prosecution of a patent application...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Patent Strategy Should Consider Examiner Incentives

Patent examiners operate under a complex network of production and quality incentives that influence the likelihood that an examiner will allow or reject a given patent application. In an empirical study published in the...more

Mintz - Intellectual Property Viewpoints

USPTO Provides Guidance on Conducting an Effective Patent Examiner Interview

Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark...more

Jones Day

PTAB Issues Guidance With Regard to AAPA

Jones Day on

On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA).  Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more

Foley & Lardner LLP

Adjusting to Alice: USPTO Report analyzes patent examination outcomes after Alice Corp. v. CLS Bank International

Foley & Lardner LLP on

Software-related patent applications have been in a legal flux for a number of years, with a lack of clarity and predictability over what exactly qualifies as patent eligible subject matter. Many technology enterprises have...more

Perkins Coie

Practice Tips for USPTO Patent Eligibility Guidelines

Perkins Coie on

The U.S. Patent and Trademark Office released Revised Patent Subject Matter Eligibility Guidance (PEG) in January 2019, then released an update (PEG Update) in October 2019 to clarify certain issues in the PEG. The PEG and...more

Faegre Drinker Biddle & Reath LLP

October 2019 Patent Eligibility Guidance Update

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

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

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

Knobbe Martens

2019 Eligibility Guidance Leads to Unpredictable Results at the PTAB

Knobbe Martens on

In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101. The guidance sought to add...more

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

Global Patent Prosecution - February 2019: Practice Tips: USPTO’s New Guidance on Patent Eligibility

Patent stakeholders have recognized the difficulties in consistently predicting what subject matter is patent-eligible, given the inconsistent and varying manner in which the Alice/Mayo test has been applied over the years....more

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

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

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

Chambliss, Bahner & Stophel, P.C.

Software Patents Get a Lifeline

Recent USPTO Guidance Offers Insight for Software Patent Eligibility - By now most of you have probably heard that "software patents" and "software patent applications" have had a rough time for the past 4 ½ years. Some of...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

Dorsey & Whitney LLP

New USPTO Guidance to Improve Predictability and Consistency in Subject Matter Eligibility Determinations

Dorsey & Whitney LLP on

On Friday, January 4, 2019, the USPTO announced revised guidance for determining subject matter eligibility under 35 U.S.C. § 101, as well as new guidance for the application of Section 112 to computer-implemented inventions,...more

Mintz - Intellectual Property Viewpoints

European Patent Office Issues New Guidelines on Artificial Intelligence and Machine Learning

On November 1, 2018, the European Patent Office (“EPO”) issued new guidelines for the patentability of artificial intelligence (“AI”) and machine learning (“ML”) inventions which indicate that applications within this subject...more

Hogan Lovells

EU Patent Office publishes preview of guidelines on patenting AI applications

Hogan Lovells on

Earlier this year the European Patent Office (“EPO”) held its first ever conference on patenting artificial intelligence (“AI”)....more

Jones Day

Change Is Coming (Maybe): Reviewing the AIA Reviews and 101 “Clarity”

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On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more

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