Category: patent application
U.S. Patent Office Revises Guidance on Subject-Matter Eligibility
Saturday | January 5, 2019By James Watsonpatent applicationpatent attorneypatent officePatent ProtectionThe U.S. Patent Office has issued its much-anticipated update to the guidance on examining patent applications for compliance with the subject-matter eligibility provisions of 35 U.S.C. § 101. Those familiar with the situation will know that the U.S. Supreme Court…
Read MoreU.S. Patent Office Revises Guidance on Subject-Matter Eligibility
Saturday | January 5, 2019By Shane Skwarekpatent applicationpatent attorneypatent officePatent ProtectionThe U.S. Patent Office has issued its much-anticipated update to the guidance on examining patent applications for compliance with the subject-matter eligibility provisions of 35 U.S.C. § 101. Those familiar with the situation will know that the U.S. Supreme Court…
Read MoreNew Federal Circuit Opinion May Limit Impact of Berkheimer Decision
Monday | August 20, 2018By Shane Skwarekfederal circuitintellectual propertypatent applicationsubject-matter eligibilityIn BSG Tech LLC v. Buyseasons, Inc., No. 2017-1980, 2018 U.S. App. LEXIS 22704 (Fed. Cir. Aug. 15, 2018), the U.S. Court of Appeals for the Federal Circuit confirmed that claims to indexing a database according to relative historical usage information were…
Read MoreWatch Your Language! PTAB De-Designates Previously “Informative” Opinion on Claim Construction
Friday | July 13, 2018By James Watsoncourt rulingpatent applicationpatent claimThe Patent Trial and Appeal Board recently designated a new group of opinions “informative.” In addition to precedential (i.e., binding decisions that the Board must follow) and nonprecedential (i.e., nonbinding decisions that may carry some persuasive weight, but the Board…
Read MoreSubject-Matter Eligibility at the CAFC and PTAB: Q1 2018
Monday | May 7, 2018By Shane Skwarekpatent applicationpatent claimspatent eligibilitysubject-matter eligibilityAs part of my ongoing research into subject-matter eligibility, I have been monitoring the decisions issued by the U.S. Court of Appeals for the Federal Circuit and the Board of Patent Trials and Appeals of the U.S. Patent Office. Over…
Read MoreTechnical Solutions to Computer-Based Problems Give Patent Applicants Success at the PTAB
Saturday | September 23, 2017By Shane Skwarekpatent applicationpatent eligibilitysoftware patentsubject-matter eligibilityIn August and September of 2017, the Patent Trial and Appeal Board of the U.S. Patent Office has issued an unusually high number of reversals in response to appeals from rejections based on subject-matter ineligibility under 35 U.S.C. § 101.…
Read MoreTechnical Solutions to Computer-Based Problems Give Patent Applicants Success at the PTAB
Saturday | September 23, 2017By James Watsonpatent applicationpatent eligibilitysoftware patentsubject-matter eligibilityIn August and September of 2017, the Patent Trial and Appeal Board of the U.S. Patent Office has issued an unusually high number of reversals in response to appeals from rejections based on subject-matter ineligibility under 35 U.S.C. § 101.…
Read MorePTAB Looks to Specification for Patent-Eligibility
Wednesday | August 23, 2017By James Watsoncourt rulingpatent applicationpatent attorneypatent eligibilityDuring the past week, the Patent Trial and Appeal Board issued opinions in response to two requests for rehearing that shed light on how it decides questions of subject-matter eligibility under 35 U.S.C. § 101. In Ex parte Dickson et al.,…
Read MorePTAB Looks to Specification for Patent-Eligibility
Wednesday | August 23, 2017By Shane Skwarekcourt rulingpatent applicationpatent attorneypatent eligibilityDuring the past week, the Patent Trial and Appeal Board issued opinions in response to two requests for rehearing that shed light on how it decides questions of subject-matter eligibility under 35 U.S.C. § 101. In Ex parte Dickson et al.,…
Read MorePatent Drafting Strategy Dooms Mentor Graphics’ Claims Requiring a “Machine-Readable Medium”
Friday | March 24, 2017By Shane Skwarekcourt rulingintellectual propertypatent applicationpatent attorneysoftware patentAsserting its U.S. Patent No. 7,069,526, Mentor Graphics accused EVE-USA of infringing software claims involving debugging a fabricated integrated circuit. The claims were written to cover the media on which software is stored, requiring a “machine-readable medium” that was programmed…
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