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In our January 22, 2019 Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), we noted that in Prong Two of Step 2A of the Guidance, an Examiner is tasked with evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.”1 More importantly, we… Read more »
The USPTO’s recently revised guidance for determining subject matter eligibility under 35 U.S.C. § 101 (“the Guidance”),1 provides some clarity to Examiners and Applicants as to what constitutes an “abstract idea.” While the Guidance identifies several abstract ideas that fall within the scope of a “Judicial Exception” during Prong One of the Alice/Mayo test (Step 2A of the… Read more »
On January 4, 2019, the USPTO announced revised guidance taking effect on January 7, 2019, for determining subject matter eligibility under 35 U.S.C. § 101 (“2019 Revised Patent Subject Matter Eligibility Guidance”). The revised guidance supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” Under the revised guidance, the USPTO outlined… Read more »
On January 4, 2019, the USPTO announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (“Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112”), which took effect on January 7, 2019. The Guidance stated that for a computer-implemented 35 U.S.C. § 112(f) claim limitation, the specification must disclose… Read more »
What is the Electronic Priority Document Exchange (PDX)? The Electronic Priority Document Exchange (PDX) is a program that provides for electronic transmission of priority documents to and from participating foreign Intellectual Property (IP) Offices. There is no fee for this service. For many foreign IP Offices, the USPTO exchanges priority documents via the Priority Document… Read more »
Despite previously affirming the ITC’s decision that a dental tradeshow catalog was not publicly accessible, the Federal Circuit recently upheld the PTAB’s opposite conclusion.1 The Federal Circuit explained that it was not bound by its prior affirmance of the ITC’s judgment because it was based on a different factual record with a different burden of proof,… Read more »
The USPTO announced a new authentication procedure for Private PAIR and EFS-Web, beginning in October 2018, transitioning from digital PKI certificates to a single, unified USPTO.gov (also known as the “MyUSPTO”) account. Benefits of the unified MyUSPTO account include: – Eliminating shared PKI certificates and credentials – support staff will have their own accounts with… Read more »
While the recent holding in Univ. of California v. Broad Institute, Inc.1, will certainly have long-reaching and important implications in the fight for control over CRISPR-based technology, the Federal Circuit’s opinion also provides additional confirmation that an obviousness determination must demonstrate a “reasonable expectation of success” when combining references from the prior art. The case arises… Read more »
A catalog distributed at a members-only trade show was found to be a printed publication under 35 USC § 102(b).1 The Federal Circuit vacated and remanded a Board decision finding that an IPR challenger’s catalog distributed at a trade show was not sufficiently available to the general public to qualify as a printed publication. The Federal… Read more »
For many patent practitioners, drafting a patent application based on an invention disclosure is one of the skills learned during the formative years of practice. It often involves repeated discussions with inventors regarding the scope, focus and overall concept of the invention to be described. What may not be a focus, however, is a full… Read more »
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