USPTO Updates 101 Guidance: Making Abstract More Concrete

Recently the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on 101 issues and will do so after a period of public input in order to increase clarity during prosecution. This update will replace, not just update, several sections of MPEP 2106. The update will also provide practitioners a […]

Has Alice Killed all the Fun?

Games, both the physical board and the methods of playing them, have had a long history of patent eligibility. For example, in 1904 Elizabeth Phillips patented the game board for Landlord’s Game, which was then later controversially patented by Charles Darrow in 1934 as Monopoly. While both of these patents were to the physical boards […]

Protecting Your Nanotechnology Inventions – Part 4: Don’t Forget About Trade Secret Protection

By Jonathan L. Kennedy

When you have a new invention, the right question to ask at the outset is whether you want to consider patenting it. This is important because many common activities in research and commercialization can create a bar to patent protection or at least start a one-year clock by which a patent must be filed. Some […]

AUTM’s Recommends Narrow Changes to NIST on the ROI Initiative

The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly […]

USPTO Director Andrei Lancu Takes a Look at Early Prosecution

This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner […]

Patentability and Patent Protection: Is the Pendulum Starting to Swing Back?

The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to […]

Just Because It’s Nanoscale, Doesn’t Mean It’s Not a Big Deal

By Jonathan L. Kennedy

Nanotechnology has been taking innovation by storm for decades now and its only increasing its footprint. This is reflected in the growing number of granted patents and published applications directed to nanotechnology inventions. For example, according to StatNano (an organization that monitors and publishing information regarding nanotechnology global developments), more than 20,000 granted patents and […]

Patenting Abstract Ideas: Technology, Turnstiles, and Transformation

On October 18, the Federal Circuit again examined the existing bounds of the patentability of abstract ideas. InSmart Systems Innovations (SSI) v. Chicago Transit Authority, the Federal Circuit determined that SSI’s four patents claimed an abstract idea and were invalid. SSI’s patents were directed to a fare collection system for mass transit (e.g. bus, train, […]

Trading Technologies: Successful Software Patents

In Trading Technologies v. GQG, the Federal Circuit addressed the patentability of software directed to a specific purpose. Trading Technologies owns patents for a computerized method and system for trading stocks, and other related goods. The method relies on improved software and user interface to facilitate stock transactions at a faster and more efficient pace. […]

Software patents in the Federal Circuit‚¬¦ One step forward, two steps back.

Following the United States Supreme Court’s ruling in the Alice Corp. v. CLS Bank Int’l, (S. Ct. 2014) case (which held that abstract ideas are not patentable), the software and computer industry has been fighting and clawing to peel back the layers of the decision in hopes of finding some clarity as to what is […]