By: Greg Kirsch, SGR Partner, Head of Intellectual Property Department The past two years have been challenging times for developers of software and other computer-implemented technology seeking to patent their inventions. In June 2014, the US Supreme Court handed down its Alice Corp. v. CLS Bank decision, which created new stricter rules for determining whether such inventions may be deemed eligible for patent protection (regardless of whether they are novel and non-obvious). The new rules comprise a two-step inquiry: (1) determine if a patent-ineligible concept is claimed (law of nature, natural phenomena or abstract idea), and if so, (2) determine… Read more
Tag: Alice
Further guidance and the light at the end of the tunnel
By: J. Gibson Lanier, Ph.D Just when the patent prosecution community thought that, for better or worse, the standards relating to the subject matter eligibility of claims were set for examination, the standards have moved again following the Mayo/Alice decisions. On Thursday, the USPTO released its latest subject matter eligibility examination guidelines for 35 U.S.C. § 101, evidencing just how unworkable the Mayo/Alice test is from a practical standpoint. This iteration of guidelines for examination is the third such revision and provides new examples of what may be subject matter eligible for biotechnology patents, but does not provide additional examples… Read more