Category Archives: Bilski

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An Easy Patent Eligibility Exercise

While we struggle to understand the ramifications of difficult patent eligibility cases like Prometheus and Myriad, it can be helpful to examine an application that plainly fails to satisfy 35 USC § 101. When the USPTO Board of Patent Appeals and Interferences affirmed the Examiner’s rejections in Ex parte Nerenberg, it may not have added … Continue reading this entry

The USPTO Examines Prometheus

The day after the Supreme Court issued its unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the USPTO issued a letter to the Patent Examining Corps that provides preliminary guidance to examiners and promises that more detailed guidance is forthcoming.… Continue reading this entry

Board Finds IBM Method of Analyzing Genomic Data Is Not Patent-Eligible

Last week, Dennis Crouch highlighted recent decisions from the Patent Office Board of Appeals and Interferences that evaluated the patent-eligibility of claims under 35 USC § 101. One case with relevance to biotech and pharmaceutical applicants upheld the § 101 rejection of IBM claims directed to methods for clustering genes having potential functional similarity by comparing gene expression profiles based on … Continue reading this entry

What Should Bilski Mean To Examiners?

Shortly after the Supreme Court issued its decision, the USPTO published “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.” The guidance is to be used by examiners when evaluating process claims for patent-eligibility under 35 USC § 101. The Interim Guidance was effective as of its July 27, 2010 publication … Continue reading this entry

Pick Your Poison: Patent-Ineligibility or Inherency?

The Supreme Court’s Bilksi decision recognized three exceptions to 35 USC § 101: “laws of nature, physical phenomena, and abstract ideas.” The Federal Circuit’s decision in King Pharmaceuticals, Inc. v. Eon Labs., Inc. warns us that although satisfying the machine-or-transformation test might prove to be an effective antidote against § 101 defects, a patent claim still may … Continue reading this entry

Bilski Soundbites: Helping or Haunting for Years to Come

While the Supreme Court’s recent decision in Bilski v. Kappos is gaining more attention for what it doesn’t say than what it does, it doubtless will be quoted for decades to come.  Which passages gain the most foothold likely will depend on the direction the law takes in this area, but here are some that we are likely to … Continue reading this entry