Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 16 JULY 2014

Putting Structure And Function Into Context For USPTO Patent Subject Matter Eligibility Guidance

Foley & Lardner LLP
Explore more from Foley & Lardner LLP

The USPTO's Guidance has been criticized for requiring a product to be markedly different in structure from a product of nature in order to be eligible for patenting.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
Author LinkedIn connections

The USPTO's "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products" has been criticized for requiring a product to be markedly different in structure from a product of nature in order to be eligible for patenting, even though the Supreme Court has considered both structure and function when evaluating the eligibility of a product derived from nature. When questioned on this issue, PTO representatives admitted their difficulty understanding that a product could have a different function without having a different structure, and specifically asked the public to provide examples of such phenomena within the July 31, 2014 public comment period. How many examples can we provide where the function of a compound depends on the context?

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

The Ninth Circuit Affirms Dismissal Of DMCA CMI Removal Claim Against AI Code Generator – Output Is A New Work Not A Copy Of Training Data

There was a significant ruling in the Doe v. Github case involving training of AI code generator models on open source. The United States Court of Appeals for The Ninth Circuit affirmed the district court ruling dismissing part of an action brought under the Digital Millennium Copyright Act (“DMCA”) by programmers against GitHub, Inc., and other defendants. The issues centered on whether defendants removed copyright management information (CMI) from content used to train the AI code generator models.
United StatesIntellectual Property
Sheppard
Sheppard
Article

AI Learning Or AI Copying? Ninth Circuit Weighs In

The Ninth Circuit held that GitHub Copilot's AI-generated code did not violate DMCA's copyright management information (CMI) removal provisions, even when output resembled source code, because the system generated new works through probabilistic patterns rather than retrieving and stripping information from existing copies. This decision establishes a critical distinction between AI systems that learn and generate versus those that retrieve and reproduce, with significant implications for how courts evaluat
United StatesIntellectual Property
Ballard Spahr LLP
Ballard Spahr LLP
Article

Texas Governor Abbott Directs TCEQ To Freeze All Data Center Permits In A Whole-of-Government Action

Governor Greg Abbott has ordered the Texas Commission on Environmental Quality to immediately halt all environmental permits for data center projects, expanding a statewide regulatory freeze that now encompasses power, water, and environmental approvals. This directive establishes strict operational mandates requiring data centers to fully fund infrastructure costs, report all resource consumption...
United StatesEnvironment
Foley & Lardner LLP
Foley & Lardner LLP
Article

California Enacts Seven Data Center Bills, Effective January 1, 2027: New Tariff, Entitlement, And Disclosure Rules For Hyperscalers, Developers, And Power Producers

California Governor Newsom signed seven data center bills into law on September 21, 2026, establishing a comprehensive regulatory framework that takes effect January 1, 2027. These bills create new tariff regimes administered by the California Public Utilities Commission, impose extensive reporting requirements on data center operators, and establish water disclosure mandates and CEQA treatment protocols.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

More Rigs Than A Year Ago, Higher Costs, And Service Prices That Haven’t Caught Up

Oilfield service firms responding to the Dallas Fed Energy Survey for the third quarter of 2026 reported substantially broader increases in input costs than in the prices they received. The input-cost index was 60.4, compared with a prices-received index of 16.3. Each index represents the percentage of respondents reporting an increase minus the percentage reporting a decrease.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

Texas Escalates Data Center Oversight With Attorney General Water-Use Investigation

Texas has launched a sweeping investigation into hundreds of data center developments that failed to comply with mandatory water use surveys, marking the latest escalation in a seven-week regulatory crackdown. The state's actions have frozen permits, paused interconnection studies, and exposed projects to criminal and civil enforcement, all while the industry faces mounting scrutiny over its rapidly growing demands on electricity and water infrastructure. With multiple state agencies now coordinating enforc
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

Diesel Stocks Are Expected To Fall Below 100 Million Barrels. Check Your Fuel Clauses.

Diesel prices have shattered records, hitting $6.529 per gallon nationally while distillate inventories plunge below five-year lows and are expected to remain there through most of 2027. With crack spreads exceeding $106 per barrel and global supply disruptions intensifying, fleet operators and oilfield services companies face mounting fuel costs that many existing contracts weren't designed to handle.
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP
Article

Oil Is Near $90 And Gas Is Near $3. Same Wells, Different Markets.

Associated gas production in the Permian Basin continues to surge alongside oil drilling, but natural gas prices have diverged sharply from crude oil, creating significant challenges for contracts written under different price assumptions. With Henry Hub futures trading around $3 per million Btu while WTI crude hovers near $90 per barrel, operators and service companies face difficult questions about pricing mechanisms, curtailment rights, and minimum volume commitments that may no longer reflect current
United StatesEnergy and Natural Resources
Foley & Lardner LLP
Foley & Lardner LLP