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Posts tagged USPTO
Rest in Peace T-Rex - USPTO Replaces PALM Server Platform

In the wake of several multi-day USPTO outages, the USPTO has transition a critical part of its Patent Application Locating and Monitoring (PALM) application to "a new, more modern, stable and resilient server platform" that "is 1,000 times faster, 20 times more efficient, and far more stable and less prone to failure."

USPTO, Prosecution
Author: Cynthia M. Bouchez, Ph.D.

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The Federal Circuit Flexes Its Muscle in Cleveland Clinic (But Not the One it Should Have)

In our January Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), and our subsequent Blog Post in February, we noted that it was unclear how the courts will view issued personalized medicine claims examined under the Guidance, as it appeared that the USPTO may want to push the courts to reexamine the boundaries of Mayo.  Well, it now seems that we have an idea – the Federal Circuit does not appear to want to be pushed.

Prosecution, USPTO, Patent Eligibility, Personalized Medicine
Author: Jeffrey K. Mills, Ph.D.

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USPTO Subject Matter Eligibility Guidance, the Federal Circuit and Diagnostic Method Claims: Clear as Mud?

In our January 22, 2019 Blog Post related to the January 2019 USPTO Subject Matter Eligibility Guidance (“the Guidance”), we noted that in Prong Two of Step 2A of the Guidance, an Examiner is tasked with evaluating “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.” More importantly, we commented that an Examiner may never have to consider whether additional elements “represent well-understood, routine, conventional activity” when determining whether the claim is directed to a judicial exception.  If the Examiner feels that the additional claim elements, no matter how routine or conventional, make the claim not directed to the judicial exception, then the analysis stops.  The claim is determined to be patent eligible.  As stated in the Guidance:

Prosecution, USPTO, Patent Eligibilty, Personalized Medicine
Author: Jeffrey K. Mills, Ph.D.

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Does USPTO Subject Matter Eligibility Guidance Muddy the Personalized Medicine Waters?

The USPTO’s recently revised guidance for determining subject matter eligibility under 35 U.S.C. § 101 (“the Guidance”),  provides some clarity to Examiners and Applicants as to what constitutes an “abstract idea.”  While the Guidance identifies several abstract ideas that fall within the scope of a “Judicial Exception” during Prong One of the Alice/Mayo test (Step 2A of the Guidance), the Guidance specifically indicates that:

Prosecution, USPTO, Patent Eligibility, Personalized Medicine
Author: Jeffrey K. Mills, Ph.D.

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USPTO Revised Guidance for Subject Matter Eligibility, Effective January 7, 2019

On January 4, 2019, the USPTO announced revised guidance taking effect on January 7, 2019, for determining subject matter eligibility under 35 U.S.C. § 101 (“2019 Revised Patent Subject Matter Eligibility Guidance”).  The revised guidance supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”

USPTO, Prosecution
Authors: Minxi Rao, Cynthia M. Bouchez, PhD.

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