Patent Law Weblog
recent posts
- Why the Alice Test is Stupid, Part IV: The Usefulness Paradox
- Teva Capitulates to Federal Trade Commission Coercion
- USPTO Issues Memoranda on Subject Matter Eligibility
- 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
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Category: Patentable Subject Matter
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By Michael Borella — Hat tip to Prof. Lefstin who wrote a detailed analysis of this case on Patently-O. We will keep our review short and to the point (pun intended, see below). We are all familiar with the rhetorical device of a parade of horribles — a series of very bad things that could…
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By Kevin E. Noonan – Judge Giles Sutherland Rich, famous for many things (including being the principal author of the 1952 Patent Act and in particular Section 103, which cabined at least for a while the Supreme Court’s penchant for invalidating patents to such an extent that Justice Jackson remarked that the only valid patent was…
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By Michael Borella and Ashley Hatzenbihler — 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" examiners. Naturally, there is little complaining about "easy" examiners (until you are defending…
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By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 16th annual list of top patent stories. For 2022, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…
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By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 16th annual list of top patent stories. For 2022, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…
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By Michael Borella — In a recent article, we argued that patent law's current subjective and inconsistently-applied mental process doctrine is erroneously based on a false equivalence between human and machine cognition. Notably, inventions that would require machine implementation to be of any practical use at all are mistakenly barred from patentability because they are allegedly…
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By Kevin E. Noonan – Last week, IP Law360 published an erudite and provocative article by Joseph Matal and his colleagues regarding the Supreme Court's recent subject matter jurisprudence in the context of earlier decisions in the 19th and early 20th Centuries (see "How Mayo V. Prometheus Strays From Patent Precedent"). These decisions included Le Roy…
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By Michael Borella — 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 cases going back years in which the Court tends to find…
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By Michael Borella and Ashley Hatzenbihler* — 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 reviews, and handles appeals from examiner rejections of patent applications. Regarding the trials, former…
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As promised in our earlier post (see "Professor Sarnoff Provides His Perspective on Tillis Bill"), here we turn to Professor Joshua Sarnoff's thoughts on the portions of Senator Thom Tillis' (R-NC) bill regarding diagnostic method patents. Those thoughts were presented in abbreviated form in the earlier post because we did not have the space the…
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