October 25, 2018
Authored and Edited by Benjamin T. Hemmelgarn; Adriana L. Burgy
On September 24, 2018, USPTO Director Andrei Iancu told the Intellectual Property Owners Association (IPO) that examiners, applicants, patent owners, and judges are struggling to understand what patentable subject matter is. Citing recent Federal Circuit opinions, Director Iancu noted how blending conditions for patentability with subject matter eligibility has resulted in incoherent doctrine. He also applauded IPO’s joint effort with the American Intellectual Property Law Association (AIPLA) to propose new statutory language for § 101, but opined that the USPTO cannot wait for the slow pace of legislation. Director Iancu indicated that the USPTO is contemplating revised guidance to help categorize the exceptions and provide additional instructions to examiners on how to apply them.
The Director generally outlined the contemplated guidance with emphasis on staying within the confines of the jurisprudence:
Admitting that this new guidance may not resolve all of the complex subject matter issues at the USPTO, Director Iancu believes that it will resolve many of the cases “in the big middle.” Most importantly, he believes that it will simplify the § 101 inquiry and help separate subject matter eligibility from other conditions for patentability. The Director’s full remarks can be found on the USPTO’s website here.
Copyright © 2018 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.