Posts tagged as:

patentable subject matter

USPTO Provides Guidance For Claims Directed To Computer Readable Media

January 29, 2010

In a notice dated January 26, 2010, the United States Patent and Trademark Office (USPTO) provided guidance for patent applicants who use claims directed to computer readable media  (also called machine readable media and similar variations).  A problem has developed in the way the USPTO and the courts have interpreted such claims, i.e., they may [...]

Read the full article →

New USPTO Director Encourages The Use of Interviews To Expedite Patent and Trademark Prosecution

September 15, 2009

In a recent “Director’s Blog” post to USPTO employees, David Kappos outlined the benefits of personal interviews to expedite the prosecution of patent and trademark applications.  Reproduced below is the post:
The practice of conducting interviews with patent and trademark applicants has been around a long time.  At times interviews are clearly productive.  At other times, [...]

Read the full article →

Did Pre-Bilski Claim Construction Help Doom Patent Validity In District Court?

July 13, 2009

U.S. District Courts in California continue to be somewhat hostile towards patent applications when it comes to the question of what constitutes patentable subject matter.  On July 7, the U.S. District Court for the Central District of California applied the Bilski machine-or-transformation test to the patentability of a method claim and found the claimed system [...]

Read the full article →

Business Method Patent Tips Offered In Wake of Bilski, Comiskey, MuniAuction

June 19, 2009

Patent practitioners discussed the viability of business method/software patent protection during a recent BNA audioconference looking at recent decisions by the U.S. Court of Appeals for the Federal Circuit.  But, they also provided clues on best strategies for litigating patents that have already been granted.
The June 3rd conference, sponsored by BNA’s Legal & Business EDge division, [...]

Read the full article →

Supreme Court Will Hear Bilski Despite SG’s Recommendation

Thumbnail image for Supreme Court Will Hear Bilski Despite SG’s Recommendation June 1, 2009

The case is a challenge to an en banc ruling last October by the U.S. Court of Appeals for the Federal Circuit that a process for predicting and hedging risk in commodities markets did not deserve a patent, because it was not tied to a machine, and did not result in a physical transformation.
 
The In [...]

Read the full article →

Another Bill Introduced To Prohibit Patents On Tax Planning Methods

Thumbnail image for Another Bill Introduced To Prohibit Patents On Tax Planning Methods May 29, 2009

The American Institute of Certified Public Accountants applauded Representative Rick Boucher, a Democrat from Virginia, and Representative Bob Goodlatte, a Virginia Republican, for introducing legislation that would prohibit patents on tax planning methods.
 
“We need this bill so that U.S. tax laws will be applied equally to all taxpayers,” AICPA President and CEO Barry Melancon [...]

Read the full article →

Possible Strategies For The Bilski Machine-or-Transformation Test

April 17, 2009

I attended a recent BNA audioconference on patent prosecution and post-grant considerations in view of Bilski.  The conference offered the insights of practitioners Kenneth N. Nigon of RatnerPrestia, Valley Forge, Pa., and Stephen C. Durant of Duane Morris, San Francisco, on drafting claims and seeking to reissue patents put in doubt by the Federal Circuit’s Bilski decision.  [...]

Read the full article →

District Court Judge’s Observations On Business Method Patents After Bilski

April 5, 2009

Back on March 27, we discussed where Bilski was applied in a recent case in the U.S. District Court for the Northern District of California to invalidate a patent held by CyberSource Corp. for a system to detect fraud in online credit card transactions.  The Harvard Journal of Law & Technology’s Jolt Digest also has [...]

Read the full article →

Bilski Test For Patentable Subject Matter Applied in District Court

March 27, 2009

CyberSource Corp. v. Retail Decisions Inc., case number 04-cv-03268, in the U.S. District Court for the Northern District of California.
A federal judge invalidated a patent held by CyberSource Corp. for a system to detect fraud in online credit card transactions, finding that it does not meet the Bilski test. Retail Decisions Inc. was the [...]

Read the full article →