Patent Law Weblog
recent posts
- USPTO Revokes Guidance on AI-Assisted Inventorship, But Rules Remain Basically the Same
- Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims
- Chewing the Cud: Are Tariffs Sucking IP Blud?
- USPTO Issues Notice Regarding Improper Small and Micro Entity Status
- Aortic Innovations LLC v. Edwards Lifesciences Corp. (Fed. Cir. 2025)
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Category: Patentable Subject Matter
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By Michael Borella and Walter DeGroft[1] – Each year since 2021, we have examined how the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has been deciding appeals of § 101 rejections from examiners.[2] And so far, the numbers have been remarkably similar. 2024 was no exception — applicants continued to face affirmance…
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By Manav Das — The landscape of patent law for artificial intelligence (AI) and machine learning (ML) innovations has become fraught with uncertainty. The U.S. Court of Appeals for the Federal Circuit's precedential opinion in Recentive Analytics, Inc. v. Fox Corp.[1], issued on April 18, 2025, represents a watershed moment for the starkness with which…
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By Kevin E. Noonan — The evolution of subject matter eligibility after the Supreme Court's decisions in Prometheus v. Mayo, Alice v. CLS Bank, and Association for Molecular Pathology v. Myriad Genetics has resulted in a regime of predictable unpredictability and certain uncertainty (a recent cogent treatment of the phenomenon in computer science technology patenting…
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By Michael Borella — In June 2014, the U.S. Supreme Court handed down Alice Corp. v. CLS Bank Int'l, establishing a now-infamous two-step, judicially-imposed test for patent subject-matter eligibility that narrowed the broad statutory eligibility principles set forth in 35 U.S.C. § 101. Under Alice, one must first determine whether a patent claim is directed…
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By Michael Borella — Background: The oral argument of Bob v. Algorithm Savings & Loan (2014), p. 6: JUSTICE HÄAGEN-DAZS: Imagine King Tut lounging outside his pyramid, surrounded by gold and bad financial instincts. He's handing out chits left and right, "Good for one unit of gold, redeemable later." He's got an abacus guy furiously…
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By Michael Borella — The last 11 years have taught us much about the Federal Circuit; namely, that a majority of the judges simply do not seem to appreciate software. Given the statements that several have made in opinions, one might be able to go as far as saying that some of these judges appear…
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By Michael Borella — For the last several years, patentees and patent practitioners have been waiting for the Federal Circuit to weigh in on the patent eligibility of machine learning models. There was an expectation that, like any other technology, the patentability under 35 U.S.C. § 101 of inventions that incorporate machine learning would need…
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By Andrew Velzen — As reported by Quantum Insider[1], this past week, the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) overturned an examiner's rejections of an application directed to a quantum computing invention.[2] Even though this decision is based solely on the view of three administrative patent…
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By Kevin E. Noonan — One of the anticipated consequences of the Supreme Court's Loper Bright decision is that it will unleash judges to impose their statutory interpretations of administrative agencies' applications of the law within their areas of purported expertise. Whether that outcome arises, (relatively) recent experience has shown that the "tyranny of the judiciary"…
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By Michael Borella, Mackenna Dunn*, and Garrett "Jake" Lee** — 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) that handles applicant appeals of examiner rejections,…
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