New USPTO Guidance May Clear Path for More Technology Patents
James J. DeCarlo Contributor
James J. DeCarlo is a shareholder in Greenberg Traurig’s Intellectual Property Practice Group. A registered patent attorney, he is actively involved in virtually all aspects of intellectual property counseling. He has spent nearly 30 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Mr. DeCarlo can be reached firstname.lastname@example.org.
Chinh H. Pham Contributor
Chinh H. Pham leads Greenberg Traurig’s Emerging Technology Practice, and is co-chair of the Boston Office Intellectual Property Practice Group. He is a registered patent attorney with particular experience in the strategic creation, implementation, and protection of intellectual property rights for high technology clients. Mr. Pham can be reached email@example.com.
On January 4, 2019 , the United States Patent and Trademark Office (USPTO) released new Patent Examiner Guidance (“the Guidance”) for subject matter eligibility. The updated guidance could benefit any technology patent applicant who has a computer-related invention – from smartphones to artificial intelligence – and who has previously had difficulty acquiring patents under the USPTO’s procedures for determining patent subject matter eligibility.
This Guidance represents the current methodology for analysis of patent claims under 35 U.S.C. § 101 in view of Mayo v. Prometheus, Alice v. CLS Bank Intl., and subsequent cases, and is intended to provide a more concrete framework for analyzing whether patent claims, as a whole, are merely “directed to” an abstract idea. The Guidance will supersede certain analysis methods articulated in previous guidance, particularly the Examiner’s “Quick Reference” that previously sought to categorize abstract ideas.
The Alice/Mayo Test
The Guidance acknowledges that applying the Alice / Mayo test to analyze claims under § 101 has “caused uncertainty in this area of the law” and has resulted in examination practices that prevent stakeholders from “reliably and predictably determining what subject matter is patent-eligible.” As such, the Guidance attempts to remedy this uncertainty by revising the USPTO’s analysis under the first step (Step 2A) of the Alice / Mayo test:
- The most overlooked path to commercialize AI is for companies to do it themselves
- PostgreSQL 同名 index operator search_path优先级引入的一个问题 - 为啥突然不走索引了？ - intarray示例
- Using “box shadows” and clip-path together
- Freshly CMO Mayur Gupta’s unexpected path from technologist to marketer
- Serato Studio helps simplify the path to music production
- Microsoft's head of quantum computing says that it's the most promising career path for any...
- A complete ML study path, focused on TensorFlow and Scikit-Learn
- Sony Xperia 10 and Xperia 10 Plus review: Charting a new path for the smartphone
- joeyrosztoczy/golden-path -- Slide Deck 4 DevOps with Elixir/Erlang