Patent Eligibility Lessons From PTAB's Use Of Berkheimer

Law360 (January 9, 2019, 3:01 PM EST) -- What makes an invention patent-eligible? Over the years, the Federal Circuit and the U.S. Patent and Trademark Office have provided guidelines for what constitutes as patent-eligible subject matter. Recent Patent Trial and Appeal Board decisions apply the Federal Circuit's 2018 decision in Berkheimer v. HP Inc.[1] to clarify these guidelines and provide important lessons on what is patent-eligible and how to prosecute patent applications on patent-eligible inventions.

Under the USPTO’s patent eligibility guidance issued earlier this week,[2] a patent examiner should apply the Alice/Mayo test to determine if a claimed invention is patent eligible under 35 U.S.C. § 101. Under Step 1...

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