Posts Tagged: "patent eligible"

Practical Tips for Drafting Patent Applications After American Axle & Manufacturing Inc. v. Neapco Holdings

The United States Court of Appeals for the Federal Circuit decided on October 3 to affirm the ruling by the United States District Court for the District of Delaware that the asserted claims of U.S. patent number 7,774,911 are directed to patent ineligible subject matter under Section101. Much has been written about the majority and dissenting opinions. Here, we concentrate on what the patent practitioner can do when drafting a patent application in light of the case. Whether one personally agrees or disagrees with the court ruling, and there are interesting comments in the dissent about both claim limitations and legal principles, the lessons from the court ruling are clear.

Trading Technologies, ChargePoint Ask High Court for Help with Federal Circuit’s Conflicted Approach to Patent Eligibility

Trading Technologies International, Inc. (TT) has filed a second petition with the U.S. Supreme Court asking it to review a Federal Circuit holding that computer-implemented inventions that do not improve the basic functions of the computer itself are directed to abstract ideas and therefore patent ineligible. The present petition relates to U.S. Patent Nos. 7,685,055 (the “’055 patent”); 7,693,768 (the “’768 patent”); and 7,725,382 (the “’382 patent”). The petition TT filed in September relates to Patent Nos. 7,533,056, 7,212,999, and 7,904,374. The patents are all from the same family as three other patents found patent eligible by the CAFC in 2017. The latest petition argues that the Federal Circuit “simply declined to address conflicting Federal Circuit authority involving the same patent family or the line of other Federal Circuit decisions adopting and applying that authority’s reasoning,” and, therefore, clarification is needed from the High Court. The company’s argument may also get a boost from another petition filed recently appealing the controversial decision in ChargePoint v. Semaconnect, in which the Federal Circuit held that a vehicle charging station was not patent eligible.

To Truly Help the USPTO, Congress Must First Stabilize Patent Law

The Senate Judiciary Committee’s Subcommittee on Intellectual Property is holding a hearing on October 30 to discuss the quality of patents issued by the USPTO. This hearing should be a great opportunity to discuss the current and future challenges facing the USPTO, including modernizing the software tools used by examiners. Unfortunately, the hearing title (“Promoting the Useful Arts: How can Congress prevent the issuance of poor quality patents?”) begins with the premise that there are poor quality patents and perpetuates the unsubstantiated position that past litigation abuse was due to patent quality. Perhaps a better start would have been to call the hearing “Promoting the Useful Arts: How can Congress help the USPTO improve patent examination?”

Patent Eligibility of Diagnostic Tools: Utility as the Key to Unlocking Section 101

A petition for certiorari was filed on October 1 in the case of Athena Diagnostics v. Mayo Collaborative Services asking the question: “Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.” The petitioners hinge their argument throughout the brief on the novel beneficial utility of their claimed method…. However, benefit has not always carried the day in recent eligibility analyses….. Patent eligibility, considered to be the most important question facing the patent system, poses insidious problems under current jurisprudence to some of the most beneficial cutting-edge technology available today. What is most curious is that this problem apparently can be solved simply by reaching back to the foundations of modern patent law and the underlying requirement that inventions be “useful,” a term that has been baked into the statutory provisions since the first patent act.

What Every Patent Attorney Should Teach Their Entrepreneur-Inventor Clients About the Patent Process

Navigating the patent process can often be challenging and filled with subtleties and nuances for the entrepreneur-inventor, especially for first-time filers. Having a trusted patent attorney who can not only help guide you through the process, but help inventors learn about it is truly invaluable to new entrepreneur-inventors. However, for many inventors, understanding what patent attorneys do and why they do it does not always come as second nature. Over the course of my career as both an inventor and entrepreneur, I’ve had the pleasure of working with many excellent patent attorneys on my companies’ patent filings. The best attorneys I’ve worked with have played an integral role in educating me and my colleagues on the patenting process, what makes a good specification and claim and how infringement lawsuits work should we ever pursue them. I’ve also learned that inventors and patent attorneys often have different visions for what the final patent will look like. As someone who’s been through the process a few times now, here are the four things patent attorneys taught me that I think would be useful to entrepreneur-inventor clients.