Thursday, June 13, 2019

Big Data - Floodgates opened? Follow-up on the 2019 Subject Matter Eligibility Guidance

Chad Gilles of Big Data published an interesting article showing a significant increase in allowance of inventions impacted by the Alice decision in last six months: Floodgates opened? Follow-up on the 2019 Subject Matter Eligibility Guidance. Mr. Gilles says it relates to the USPTO Guidelines on patent eligibility released earlier this year.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, June 11, 2019

Supreme Court - Federal Government Can't Challenge Patent Validity in US Patent Office

In Return Mail v. U.S .Postal Service, the Supreme Court held the Federal Government cannot file petitions for inter partes review, post grant review, and covered business methods at the Patent Trial & Appeal Board (PTAB) under the American Invents Acts because the AIA statute does not define the term "person," a presumption arises a federal agency is not a "person" and the U.S. Postal Service failed to rebut that presumption.

Justice Breyer, joined by justices Ginsberg and Kagan, unsuccessfully argued legislative history, among other things, demonstrated Congress intends "person" to include Federal Agencies.

Due to the low volume of Government petitions for AIA trials (less than 20 petitions in 8 years) I don't expect this decision to impact many in the future, but it is favorable to patent owners given the invalidation risk at PTAB.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, June 10, 2019

USPTO - Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112

The USPTO has a free webinar 12-1 PM ET, Tuesday, June 11: Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.

The USPTO will discuss examination of computer-implemented functional claim limitations under 35 U.S.C. § 112(f) (the step or means plus function clause) and 35 U.S.C. § 112(a) (the enablement and written description clause).

The USPTO requests questions be sent to patentquality@uspto.gov.

Registration is not necessary to attend. More information is available on the USPTO's event page.

Interesting in view of Congress' proposal to revise 35 U.S.C. § 112.

Copyright © 2019 Robert Moll. All rights reserved.