The Federal Circuit finds a data-structure related software invention non-abstract under the first part of the Alice patent eligibility test because it is directed to a specific implementation of a solution to a problem in the software arts. Key to the decision was the use of a specification drafting technique that has received widespread critiscim in recent years.

The USPTO recently issued still further new guidelines on subject matter eligibility with respect to 35 USC Section 101.

In a recent decision, the Federal Circuit found a hair cutting method patent ineligible.  While some will read this case as saying that hair cutting methods are not patentable, that would be a mistaken conclusion and would further miss a key underlying issue at play in this case.

With the significant increase in government fees at the US Patent and Trademark Office, applicants are increasingly sensitive to piecemeal prosecution. A contributing factor that cuts against compact prosecution is incomplete Office action rejections, but Applicants do have a recourse.

While all oral hearings used to occur in Washington (Alexandria), the USPTO and PTAB have expanded hearing locations to satellite offices including Detroit, Michigan, Denver, Colorado, Silicon Valley (San Jose), California and Dallas, Texas. Applicants should take note of the opportunity to request specific locations in order to reduce the burden of oral proceedings

The statute authorizing means claims simply authorizes the use of a certain claim type (e.g., means claims) and defines how claims that fall under the section are interpreted. As such, it cannot form the basis of a rejection by an Examiner, as confirmed in a recent PTAB case.

Patent Examiners often use the theory of "design choice" in formulating rejections. The typical situation is where one or more primary references show all of the elements of a claim except for what the Examiner feels is a minor modification, for example a certain structural feature such as a taper. These rejections can be particularly difficult to overcome when the specific element alleged to design choice is not disclosed in the specification as having any unique advantages.

No one likes double standards, especially when those in power blatantly apply them. A recent PTAB decision denying a motion for joinder illustrates reasoning that should be more broadly and fairly applied by the USPTO.

When examining patent applications, the USPTO generally applies the broadest reasonable interpretation to patent claim terms, including in post grant proceedings where the patent term has not yet expired.

How to best deal with Alice-based rejections from the USPTO is a complex task due in part to the generally difficult problem of applying the Supreme Court's two-part test to individual cases. An approach is discussed utilizing a technical problem-solution approach based on recent guidance from USPTO training slides.

Alice-based Abstract Idea rejections are flooding patent applicants at the US Patent and Trademark Office. While the USPTO bears the burden of establishing a rejection, it is not clear what level of evidence and explanation is required for the Office to meet its burden. A recent PTAB case is analyzed that shows an example of an insufficient abstract idea rejection.

The Federal Circuit today issued a shockingly broad decision in Synopsys, Inc. v. Mentor Graphics Corporation that affects the scope of power that the US Patent and Trademark Office can employ when deciding the critical question of patent validity in Post-Grant proceedings. The decision, written by Judge Dyk, considers not only the scope of the USPTO's authority, but also the ability for judicial review. Judge Newman writes a detailed dissent, raising significant questions about the decision. Given the Supreme Court's recent decision to review the Cuozzo Speed Technologies case, this decision seems to call out with another reason for the Supreme Court to reign in the Federal Circuit.

The issue of obviousness is at the heart of defining what is, and what is not, an invention. While examples at the extremes are relatively easy to find, many cases tend to lie somewhere in the fuzzy range between obvious non-patentable concepts and non-obvious inventions. Finding and presenting convincing arguments, one way or the other, is part of the challenge that makes patent law so engaging.

Inventions are often solutions to technical problems. Truly appreciating an invention often involves understanding how the new features operate to solve problems with prior approaches and achieve advantages relative to those prior approaches. At the same time, patent drafting techniques should be used to avoid giving away, as admissions, the key recognitions that led to the invention.

The Federal Circuit recently issued a precedential opinion (In re Urbanski) discussing the interrelationship between the issues of teaching away, the obviousness of modifying a reference that would render it inoperable for its intended purpose, and result-effective parameters.

The USPTO and the Federal Courts continue to invalidate patents under Section 101 based on a range of factual assertions, even when considering the issue under a Rule 12(b)(6) motion. Twombly and Iqbal have helped enable this shift. In Priceplay.com v. AOL, Facebook, and Google, the Babe's famous contract negotiations involving a coin flip helped invalidate patents that combined online e-commerce with on-line gaming, where the price was based not only on the buyer's participation in an auction, but also on a competitive activity that is associated with the product being purchased.

The Federal Circuit has issued another abstract idea decision in the context of a vehicle system for testing drivers. The opinion provides numerous hints and guidance as to facts that could have enabled the patent to survive. Those drafting and prosecuting patent applications, particularly in the autonomous or intelligent vehicle area, should take note of the analysis in this case.

Winning a case before the USPTO's Patent Trial and Appeal Board (PTAB) can be a long and arduous journey. Unfortunately, the case is then returned to the Examiner, who may still be inclined to try and deny the application by re-opening prosecution with new rejections. While such actions can be exceptionally frustrating, and whether or not they are reasonable, there are sometimes ways for the Applicant to quickly overcome them.

The highly watched case from the Massachusates Supreme Court absolves an IP Boutique law firm of legal malpractice claims from representing competing clients in the same technical area.