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 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.
  • 11/8/2018
    We are pleased to announce the following Sughrue attorneys who have been appointed to leadership positions by the American Intellectual Property Law Association (AIPLA):

    Jody Drake: Public Appointments Committee, Chair
    Jody Drake has been appointed Chair of the Public Appointments Committee for the American Intellectual Property Law Association (AIPLA) serving a two year term to 2020. The Public Appointments Committee is appointed by the President-Elect of AIPLA and has responsibility for reporting to the Board of Directors on the qualifications of certain individuals being considered for office in the USPTO, the US Copyright Office and the Federal Circuit.

    She has also been appointed by the Board to the AIPLA Development Task Force serving a one year term expiring October 2019.

    Gabrielle Roth: Trademark Relations with USPTO Committee, Chair
    Gabrielle Roth has been appointed Chair of the Trademark Relations with the USPTO Committee for the American Intellectual Property Law Association (AIPLA) serving a two year term to October 2020. This committee is primarily responsible for monitoring, reporting on, and providing recommendations to the AIPLA Board and the USPTO regarding new developments and proposed rule changes at the USPTO. In addition, the committee works with the USPTO to schedule Trademark Round Table Events around the country and members serve as AIPLA volunteers at the USPTO Trademark Expo.

    Hui Wauters: AIPLA IP Practice in Far East Committee, Vice Chair
    Hui Wauters has been appointed Vice Chair of the AIPLA IP Practice in Far East Committee serving a two year term to 2020. The committee coordinates activities with the International & Foreign Law Committee and aims to expand their work to include Southeast Asia, India and Australia. Such activities involve intellectual property educational programs as well as committee meetings to maintain relations and exchange information with colleagues in the Far East.

    Kevin Kunzendorf: U.S. Bar- JPO Liaison Council, Chair & AIPLA Representative
    Kevin Kunzendorf has been appointed Chair of the U.S. Bar JPO Liaison Council and will be acting as AIPLA Representative to the JPO Liason Council.

  • 8/9/2018
    Sughrue Mion is pleased to be supporting the Korean-American Intellectual Property Bar Association (KAIPBA) in hosting their Annual Summer Seminar, for which they will be joined by two Patent Trial and Appeal Board (PTAB) Judges, Michael W. Kim and Rae Lynn P. Guest.

    Judge Michael W. Kim was appointed as an Administrative Patent Judge on April 24, 2011, and as a Lead Judge in August of 2013. In addition to his management responsibilities, Judge Kim conducts inter partes reviews and post-grant reviews under the America Invents Act, and also reviews adverse decisions of examiners upon applications for patents. He works primarily in the business methods, mechanical, and electrical technology areas. Prior to his appointment, Judge Kim was a Patent Attorney at the Board of Patent Appeals and Interferences. Prior to joining the U.S. Patent and Trademark Office, Judge Kim was a Patent Attorney at the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, before spending a year on a presidential election campaign. Judge Kim received his law degree from the Duke University School of Law, and holds a Bachelor of Science degree in Mechanical Engineering from the Massachusetts Institute of Technology. He is a member of the bars of the District of Columbia and the State of California.

    Administrative Patent Judge Rae Lynn P. Guest holds a J.D from American University, Washington College of Law and a B.S. degree in Chemical Engineering from The Johns Hopkins University. Judge Guest prosecuted and litigated patents as an Associate Attorney with Sterne Kessler Goldstein & Fox. As a Patent Attorney with the Office of Naval Research, she prosecuted patent applications in a variety of technical disciplines and consulted on licensing agreements. She joined the Board of Patent Appeals and Interferences in 2008, first as a Patent Attorney, after which she became an Administrative Patent Judge. As an Administrative Patent Judge she has served on panels deciding ex parte appeals, trials, interferences, and ex parte and inter partes reexaminations in a variety of technical disciplines.

    Judge Michael Kim and Judge Rae Lynn Guest will be guest speakers for the seminar, taking place on August 16th at Sughrue's Washington, D.C. office. We are looking forward to such an exciting event and would like to thank KAIPBA for sharing this educational opportunity with us.
  • 7/26/2018
    IAM Patent 1000, regarded as "the definitive 'go-to' resource for those seeking to identify world-class, private practice patent expertise and leading expert witnesses in the US," has named Sughrue Mion, along with partners Mike Dzwonczyk, Alan Kasper, and Bill Mandir, among the top patent firms and professionals in the Washington D.C. area for 2018. Sughrue comes recommended in patent prosecution and litigation, noted as "proficient in litigation and post-grant proceedings thanks to lean and efficient staffing of technically well-qualified teams." The well-respected publication named Dzwonczyk, a "pharmaceutical whizz," Kasper, "a lawyer to whom many look for an authoritative take," and Mandir, a "dependable captain," in the list of top patent litigators. The full article can be found here. Sughrue thanks our clients and business partners for their continued support and confidence.
More News
  • 2/14/2019

    Office of Sughrue Mion, PLLC

    2100 Pennsylvania Ave, NW- 6th Floor
    Washington, DC 20037

    On February 14, 2019, Sughrue Mion will host a presentation explaining the recent 2019 Patent Eligibility Guidance including the meaning of “judicial exception integrated into a practical application.” During this presentation, we will discuss how the USPTO applies the new Prongs 1 and 2 of the USPTO's revised Step 2A based on the USPTO's concrete Examples 37-42 issued with the new guidance. A Q&A (Question and Answer) session will follow the presentation.

    Read more here.

  • 2/7/2019
    Office of Sughrue Mion, PLLC    
    2100 Pennsylvania Ave NW
    Washington, DC 20037
     "Standing At The Federal Circuit: The Constitutional Roadblock To Appealing PTAB Decisions"

    The availability of appellate review of a PTAB final written decision is an important consideration in determining whether to challenge a patent in a PTAB trial. In a series of opinions, the Federal Circuit has ruled that certain petitioners, while able to challenge a patent before the PTAB, do not meet the Constitutional standing requirement necessary for appellate review. This body of case law continues to evolve and is a central issue in two high profile, pending appeals involving biotechnology and aeronautics inventions. In this presentation, the speakers will explore the issue of standing as it applies to petitioners in PTAB trials who have not been sued and who do not face an imminent threat of infringement and find themselves without standing to appeal a PTAB final written decision to the Federal Circuit.

    More information here.