Posts Tagged ‘intellectual property’

USPTO issues post- Alice examination guidelines

Thursday, June 26th, 2014

A copy of the guidelines can be found here:


I will comment on this later.


CLS v Alice – Abstract Idea, Wherefore Art Thou?

Thursday, June 19th, 2014

Guest post from Brad Forrest, Shareholder at Schwegman Lundberg & Woessner, P.A.

Passing on the opportunity to provide a usable test to determine what is an “abstract idea,” the Supreme court simply compared the idea underlying the claims in Alice v. CLS Bank to those in Bilski and said they both are directed to abstract ideas implemented by a general purpose computer: “In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinc­tion between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.”

At least on the bright side, no further damage to subject matter eligibility appears to have been done by the decision.  It just appears to be a repeat of Bilski at first glance.


Former SLW Officer Named USPTO Regional Director

Tuesday, June 17th, 2014

Russell Slifer, a former officer at Schwegman Lundberg & Woessner, has been named as the USPTO Regional Director for its Denver office.

Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, wrote on her blog “Director’s Forum”:

The other big news is that we have hired a Regional Director for the Denver office—Russell Slifer, who has practiced intellectual property law for the last 20 years. For the past eight years, Russ served as the Chief Patent Counsel for Micron Technology in Boise, Idaho. He also was a design engineer for Honeywell and spent more than nine years in private practice in Minnesota helping high technology clients, including individual inventors, universities, and Fortune 100 companies, build patent portfolios to protect their innovations. Russ is active an active member in the legal and innovation communities. These experiences make Russ an ideal person to serve as the inaugural leader of our new satellite office for the Rocky Mountain region, and I look forward to him transitioning in as part of our senior leadership team.

Schwegman offers its congratulations to Russ.

Natural Products Eligibility Guidance – Post-Forum Comments

Tuesday, June 17th, 2014

Guest Post from Paul Cole, Lucas & Co., UK

Readers of this and other blogs will have been aware of comments of mine in relation to the USPTO natural product eligibility guidance.

Available here is the final version of the post-forum comments that I submitted  to USPTO on 15 June.

On substantive law, the comments take the position that the ruling in Myriad is concerned with reasons rather than structural differences and that the qualification for eligibility should continue to be a difference plus new utility.

A number of suggested replacement or additional examples have been included. Where appropriate, these have been created using real world examples such as cephalosporin plasmids and rapamycin based on real expired patents rather than notional examples such as Amazonic acid. It is believed that real world examples are more fairly representative of past and current research.

The end of the term for comments at the end of June is rapidly approaching. Those wish to summit comments on the guidance should do so using the myriad-mayo comment address .