In ruling on motions to dismiss and motions for summary judgment, courts have found a number of patents ineligible under 35 U.S.C. § 101 as a matter of law.  However, in Berkheimer v. HP, the Court of Appeals for the Federal Circuit indicated that in certain instances, the determination of patent eligibility under § 101 involves questions of fact and thus are questions for juries.
Continue Reading Juries Will Play Role in Some Questions of Patent Eligibility

In Thaler v. Commissioner of Patents, case number VID 108 of 2021, in the Federal Court of Australia, an Australian Federal Judge became the first known jurist to rule that inventions developed by artificial intelligence can qualify for patent protection.

The case involved a patent application from Dr. Stephen Thaler, a researcher who runs a Missouri company called Imagination Engines. An artificial intelligence system, which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS), was named as the inventor by Dr. Thaler. DABUS was the inventor of two inventions, a type of improved beverage container and a type of flashing beacon meant to be used in emergencies.
Continue Reading Australian Judge Rules Inventions Developed by Artificial Intelligence Can Qualify for Patent Protection

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which involve the limits on patent eligibility under 35 U.S.C. § 101.   For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” The Supreme Court further recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.

To determine whether claims are patent-eligible the Supreme Court set forth a two-part test in Mayo as further explained in Alice. This test consists of the following steps:


Continue Reading USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law

Patents protect inventions.  However, patents protect only certain inventions.  In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture, machines, processes, and compositions of matter. 35 U.S.C. §101.  There are some things that are not patentable (i.e. are patent-ineligible subject matter): laws of nature, natural phenomena, and abstract ideas.

In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 216, 219 (2014), the Supreme Court established a two-part test to determine whether an invention is patent-eligible.  In the first step, a determination is made as to whether the claimed invention falls within one of the categories of patent-ineligible subject matter.  If it does, the second step is performed:  a determination of whether the claimed invention has an inventive concept that transforms the patent-ineligible subject matter into something patentable.


Continue Reading Once Again, Generic Computer Systems That Do Routine Functions are Not Patentable!

5-4 Opinion Offers Judicial Workaround by Giving More Oversight to the USPTO Director

In U.S. v. Arthrex, case number 19-1434; Smith & Nephew v. Arthrex, case number 19-1452; and Arthrex v. Smith & Nephew, case number 19-1458, the Supreme Court of the United States recently held that Patent Trial and Appeal Board (PTAB) judges are unconstitutionally appointed.  But, the Court also held that providing the Director of the United States Patent and Trademark Office (USPTO) with more oversight over PTAB rulings will remedy the unconstitutionality of the PTAB judges.


Continue Reading Supreme Court Finds PTAB Judges Unconstitutional