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ARTICLE · 09 FEBRUARY 2015

Arguing A Post-Alice §101 "Abstract Idea" Rejection During Patent Prosecution

Womble Bond Dickinson
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Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations).

United StatesIntellectual Property
Christopher M. Hall
Christopher M. Hall
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Originally published on Law360

Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an abstract idea under 35 USC §101, judicial exceptions (see articles on Ultramercial, patent invalidations).  Patent applications are also facing similar challenge, with some claims being rejected during examination by the United States Patent and Trademark Office (USPTO), as allegedly directed to patent-ineligible subject matter per the above.  What can we, as patent practitioners, do during patent prosecution, to argue for patent claim subject matter eligibility, when faced with such a rejection?

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