In Clarilogic v. FormFree Holdings, the Court Of Appeals upheld the District Court for the Southern District of California holding that the claims of U.S. Patent Application No. 8,762,243 (‘243 Patent) are ineligible under 35 U.S.C. § 101 because they are directed to an abstract idea and contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea. The ‘243 Patent is entitled “System and Method for Electronic Account Certification and Enhance Credit Reporting.” Generally, the claimed computer implemented system gathers a potential borrower’s financial data from a third party, applies an… [read more]

On November 2nd, the USPTO issued new guidance to Patent Examiners regarding § 101 subject matter eligibility. The memorandum (USPTO-McRo-Bascom-Memo-1.pdf) provides guidance based on Federal Circuit decisions issued since the office’s most recent, May 2016, update. The memo includes guidance based on the Federal Circuit’s recent decisions in McRO, Inc. v. Bandai Namco Games and BASCOM Global Internet v. AT&T Mobility decisions. In McRO, the Federal Circuit held that a method of automatic lip synchronization and facial expression animation using computer-implemented rules is patent eligible under 35 U.S.C. § 101 as being directed to an improvement in computer-related technology. The… [read more]

In talking to clients whose patent applications involve software, it simply is not good enough to ask for as much specificity as possible to help remove the invention from the realm of an abstract idea and avoid an unpatentable subject matter rejection. Rather, it now seems that the required specificity must also be grounded in a “technical means” for implementing the software components. Of course, what this “technical means” encompasses is not necessarily easy to define. A recent decision from the Federal Circuit in Electric Power Group, LLC v. Alstom S.A. does provide some helpful insight as to this “technical… [read more]

No one would want to complete the process of applying for a patent only to find out that it has already been claimed. There generally are two types of inventors: the individual inventor/small company and the large, corporate research and development (R&D) groups. R&D groups generally have a significant advantage over smaller entities because they are well-connected in the intellectual property community and they have ample capital. Individual inventors have to function with fewer resources and a smaller network of colleagues. The good news for the individual inventor is that they can “level the playing field” with the use of… [read more]

The Patent Prosecution Highway is a set of initiatives for providing accelerated patent prosecution among 23 nations, which provides a method for expediting examination of a pending patent application in a foreign country. Once one of the enrolled countries has approved an application for issuance, the application may be eligible for the Patent Prosecution Highway (PPH) in other countries signed on to the initiative. The application in the foreign country should be identical to the original application that was ultimately approved in one of the member countries. This means that if an applicant were granted a patent in the United… [read more]