Patent Office Trials Blog
  • 2/14/2019
    On Monday, January 7, 2019, the United States Patent and Trademark Office published its 2019 Revised Patent Subject Matter Eligibility Guidance. See 84 Fed. Reg. 4, 50-57 (January 7, 2019) at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf. While the Patent Office’s revised guidance does not constitute substantive rule making or have the force of law, it sets out the agency’s policy and could prove to have the most significant impact thus far on subject matter eligibility determinations before both the Examination Corps and the PTAB. The revised guidance supersedes conflicting sections in the Manual of Patent Examining Procedure and prior Office guidance and represents a major effort under current Director Iancu to bring – at least within the Patent Office – simplicity and greater certainty to one of the most debated and indeterminate areas of patent jurisprudence today.

    The revised guidance changes how the first step of the Alice analysis (Step 2A) is applied, now requiring a two-prong analysis. The first prong of revised Step 2A requires the Examiner to determine whether a patent claim or patent application claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas). And in particular, a claim is directed to an abstract idea only if it falls into one of the enumerated groups of abstract ideas: (a) mathematical concepts, (b) certain methods of organizing human activity (e.g., economic activity), and (c) mental processes. If the claim does not fall within one of the judicial exceptions (e.g., enumerated abstract ideas), the claim is to be deemed patent eligible (i.e., compliant with §101). Under the second prong of revised Step 2A, the Examiner must determine whether a claim that recites a judicial exception integrates that judicial exception into a practical application. If the subject claim integrates the judicial exception into a practical application, the Examiner should find the claim patent eligible.

    On the other hand, if a patent claim that recites a judicial exception is not integrated into a practical application, the Office is still required to evaluate whether the claim contains “significantly more” under Step 2B (the second step of the Alice analysis) based on the April 2018 Berkheimer Memo. See 83 Fed. Reg. 77 (April 20, 2018). While it is too early to tell, we expect that if a claim does not survive Prong 2 of Step 2A (“practical application”), it might be difficult to persuade the Office that the claim survives Step 2B.

    The new guidance would seem to be in line with Director’s Iancu’s remarks delivered at the Intellectual Property Owners Association 46th Annual Meeting last September to “get out of the rut, at least by keeping rejections in their lane and by clearly categorizing the subject matter of any exception.” Overall, there is growing optimism that the new guidance will result in the Patent Office issuing fewer § 101 rejections, particularly in light of new Prong 2 of revised Step 2A.

    On February 14, 2019, Sughrue Mion will host a presentation discussing the revised Patent Eligibility Guidance including the meaning of “judicial exception integrated into a practical application” based in part on the new Abstract Idea Examples 37-42.
  • 2/13/2019

    Sughrue is proud to announce that our attorney, Sujin Park, has been appointed as the Vice President of the Korean-American Intellectual Property Bar Association for the 2019 year.

    The KAIPBA (https://www.kaipba.org/) is a professional organization founded in 2007 and has about 100 members including US patent attorneys, US patent agents, PTO examiners, and trainees from Korea.  The KAIPBA provides educational programs and networking opportunities among the members and IP professionals in the U.S.  In the past, the KAIPBA has held a series of seminars, attracting such notable speakers as Randall Rader (former Chief Judge of the U.S. Court of Appeals for the Federal Circuit), John Doll (former Acting Under Secretary of Commerce and Acting Director of USPTO), Alan Kasper (former President of American Intellectual Property Law Association), David Kappos (former Under Secretary of Commerce and Director of USPTO), Russell Slifer (Former Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director), and Lead Judge Michael W. Kim & Former Judge Chung K. Pak (of the Patent Trial and Appeal Board of USPTO).

    KAIPBA maintains a close cooperative relationship with other professional organizations such as Korea Intellectual Property Office (KIPO), Korea Patent Attorney Association (KPAA), Korea Intellectual Property Protection Agency (KIOPA), Korea Intellectual Property Rights Information Service (KIPRIS), and Korean-American Scientists and Engineers Association (KSEA).

    Congratulations, Sujin!

  • 2/13/2019
    Sughrue Partner, Alan Townsley, was selected to offer an Expert Analysis piece on the recent Federal Circuit decision in Athena v. Mayo for the globally renown news source, Law360. Law360 is a LexisNexis Company that reports on breaking news related to clients, competitors, practice areas and industries in the legal field. The article, "Innovative And Ineligible: Diagnostic Patents At Fed. Circ.," can be found here.
  • 2/5/2019

    World Trademark Review 1000 has named Sughrue Mion PLLC and its esteemed Trademark attorneys, Gary Krugman, Jody Drake and Stephanie Wade, among D.C.'s leading Trademark firms and professionals for 2019. Noted as "a boutique that stands out from the crowd," Sughrue is proud to be recognized as a top D.C. firm in the categories of Enforcement & Litigation and Prosecution & Strategy. WTR 1000 lists Mr. Krugman as a top individual for Enforcement & Litigation, and lists Mr. Krugman, Ms. Drake and Ms. Wade as top individuals for Prosecution & Strategy. We congratulate our hard working Trademark attorneys and team!

    View the full ranking and write-up here.

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