Category Archives: Alice

PTO Releases Revised Guidance on Compliance with Mayo/Alice Rule

On April 19, the USPTO released a Memorandum from Robert Bahr, The Deputy Commissioner for Patent Examination Policy, that summarized the support required for a finding if a claim directed to a judicial exception to s. 101 eligibility under Step … Continue reading

Posted in Alice, Claim Construction, Forum, Patenting Methods/Processes, Written Description Requirements (WDR) | Tagged , , , , , , , | Leave a comment

Ex Parte Buck: Can a Composition Claim be a Natural Phenomenon?

In a recent decision, Ex Parte Buck, Appeal no. 2017-005470 (PTAB, April 20, 2018), the Board affirmed the examiner’s ruling that a composition claim reciting two natural products was patent-ineligible as an attempt to claim a natural phenomenon: 7. A … Continue reading

Posted in Alice, PTAB | Tagged , , , , | 1 Comment

Supreme Court Decides Oil States – Inter Partes Review Does Not Violate Article III or the 7th Amendment

The Supreme Court issued its long-awaited opinion in Oil States Energy Services v. Greene’s Energy Group, Appeal No. 16-712 (April 24, 2018), holding 7/2 that inter parties review was an appropriate exercise of the power of Congress to assign adjudication … Continue reading

Posted in Alice, Federal Court, Patent Reform Legislation, Post-Grant Issues, Post-issuance procedures, PTAB | Tagged , , , , | 1 Comment

USPTO Memorandum Seeks to Clarify “Inventive Concept” Requirement

On April 19, 2018, the USPTO released a Memorandum from Robert Bahr, The Deputy Commissioner for Patent Examination Policy, to the Examiners,  that summarized the support required for a finding whether or not a claim directed to a judicial exception … Continue reading

Posted in Alice, Claim Construction, USPTO Practice and Policy | 1 Comment