2016 May

USPTO Updates Examiner Guidance on Patent Subject Matter Eligibility – Section 101

May 20, 2016

The last update to the USPTO’s guidance to examiners on patent subject matter eligibility was issued in July of 2015. The USPTO recently provided the next iteration, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. Copies of these documents can be obtained from the USPTO’s Subject Matter Eligibility page.

The new life science examples use hypothetical fact scenarios (such as vaccines and diagnostics) to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas.

The examiner memorandum lays out what is required for a proper rejection and provides guidance to the examining corps on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained.

In addition to this new update, the USPTO has stated that it will continue to conduct interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples.

The ultimate goal is to efficiently issue subject matter rejections where appropriate and provide a sound basis for those rejections, but also to remove those rejections where appropriate arguments and/or amendments are presented. As the post-Alice case law continues to evolves, this is certainly a difficult task.

To learn more about subject matter eligibility and how it can affect currently issued patents or the pursuit of future patents, feel free to contact one of our attorneys.


Woodard Emhardt Obtains Dismissal of Trademark Infringement Complaint

May 19, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a trademark infringement lawsuit filed against operators of historical horse racing games by numerous prominent race tracks should be dismissed. The suit alleged that the defendants infringed upon the Plaintiffs’ trademarks by using the racetracks’ names to identify the location where historic horse races had taken place. The Court reasoned that the defendants were “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…” Moreover, the court found that the defendants were protected by the fair use defense when describing where an event took place, even when the location described is most commonly conveyed using a registered trademark. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Woodard Emhardt Obtains Dismissal of Patent Infringement Complaint Under Section 101

May 12, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a patent infringement lawsuit filed against operators of historical horse racing games should be dismissed as the three patents asserted failed to claim patent eligible subject matter under 35 U.S.C. 101. In dismissing all three infringement claims, the Court wrote “[Plaintiff]’s patents encompass subject matter facially unpatentable under Section 101. The only plausible reading of the ‘150, ‘887, and ‘737 patents reflects that they are ineligible for patent protection. The Asserted Patents are abstract ideas, and [plaintiff] has failed to demonstrate an inventive concept required to transform these claims into patentable subject matter within the meaning of Section 101. Thus, the claims asserted in the Amended Complaint must be dismissed.” The opportunity for companies facing the threat of infringement from patent holders to obtain either invalidate those patents or obtain prompt and efficient dismissal such as this in litigation has significantly increased following the Supreme Court’s decision in Alice. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.