USPTO guidance provides clarity into Post-Alice practice
Over the last few months, the United States Patent and Trademark
Office has issued a set of guidance documents that help clarify the
state of patent office practice as it relates to patent subject
matter eligibility following the Alice decision by the United
States Supreme Court (Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
573 U.S. __, 134 S. Ct. 2347 (2014)). These guidance documents
provide useful hypothetical and real examples derived from recent
judicial decisions before the Federal Circuit and the United States
The most recent guidance document is a table of Subject Matter
Eligibility Court Decisions, which provides patent applicants with
a quick reference chart that concisely lists cases in chronological
order, indicating the patents / applications in issue as well as
the judicial conclusion as it related to the particular claims in
question of each case.
For prospective patent applicants, a quick review of these
decisions and the guidance may be instrumental in helping draft
patent applications and/or claims that have a stronger chance of
patentability. Specific examples are provided in relation to
digital image processing, games, financial technology, life
sciences, manufacturing, sensors in the context of optimizing
device performance, among others. Further, the USPTO has given
helpful reasoning alongside the claim examples, indicating why the
claims were found patent-eligible or patent-ineligible (e.g., when
looking at the limitations as an ordered combination, the invention
as a whole amounts to significantly more than simply organizing and
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general guide to the subject matter. Specialist advice should be
sought about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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