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ARTICLE · 27 SEPTEMBER 2017

Surviving Alice With An Appeal

Fenwick
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This third article in the "Surviving Alice" series examines how the USPTO's Patent Trial and Appeal Board has responded to the U.S. Supreme Court's June 2014 Alice decision

United StatesIntellectual Property
Mark Nowotarski
Mark Nowotarski
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This third article in the "Surviving Alice" series1 examines how the USPTO's Patent Trial and Appeal Board has responded to the U.S. Supreme Court's June 2014 Alice decision2.  It also shows how applicants can use the PTAB's recent decisions to substantially increase their chances of success before the board.  We look at appeals coming out of the USPTO's business method work groups 3620, 3680 and 3690. 

Applicants have had a difficult time getting business method patents allowed since Alice.  The Alice decision firmly established the two part "Alice/Mayo test" as the standard for determining whether a patent's claims were statutory under 35 U.S.C. 101.  The two steps in the Alice/Mayo test are:

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