Reasonable Expectations of Success and Compound Claims “As a Whole”

Challenges to new molecule patents frequently hinge on the question of obviousness in view of a prior art “lead compound.” More often than not, patentees fend off these challenges by successfully arguing against selection or modification of the asserted lead compound, and/or by showing unexpected properties. But when the skilled person had at least some reason … Continue reading Reasonable Expectations of Success and Compound Claims “As a Whole”

Keeping It Secret: Protecting Your Invention For Foreign Patenting

You’ve got it: the million dollar idea. You figured out how it works. You know that no one has ever done anything like this before and that your discovery is revolutionary. What do you do now? For many people, the answer to that question isn’t “immediately file a patent application with the United States Patent … Continue reading Keeping It Secret: Protecting Your Invention For Foreign Patenting

Walker Process Antitrust Case: The Ball is in Whose Court?

In a recent game of jurisdictional tennis, the Fifth Circuit returned a case involving a Walker Process claim, sending it back to the Federal Circuit. Xitronix Corp. v. KLA-Tencor Corp., No. 18-50114 (Feb. 15, 2019). In Xitronix, the plaintiff alleged that the defendant was enforcing a fraudulently obtained patent for anti-competitive behavior in a violation … Continue reading Walker Process Antitrust Case: The Ball is in Whose Court?

USPTO Issues New Guidance on Subject Matter Eligibility

Previously featured on Michael Best’s Software and Section 101 blog on January 29, 2019, Michael Best IP attorney Greg Helding wrote: In 2014, the Supreme Court’s Alice took computer-implemented inventions down the rabbit hole. Since then, lower courts, the USPTO, practitioners, and applicants all have struggled to come to consensus on what constitutes an abstract idea, and … Continue reading USPTO Issues New Guidance on Subject Matter Eligibility

Federal Circuit and USPTO Turn Corner on Software Patent Eligibility

Previously featured on Michael Best’s Software and Section 101 blog in June of 2016, Michael Best IP attorney Greg Helding wrote: In May 2016, the U.S. Court of Appeals for the Federal Circuit decided Enfish, LLC v. Microsoft Corp and TLI Communications LLC v. A.V. Automotive. These decisions, along with related guidance from the U.S. Patent and Trademark Office (USPTO), may … Continue reading Federal Circuit and USPTO Turn Corner on Software Patent Eligibility

USPTO Announces New Guidance on Post-Alice Subject Matter Eligibility

Previously featured on Michael Best's Software and Section 101 blog in December of 2014, Michael Best IP attorney Greg Helding wrote: "On December 15, 2014, the United States Patent and Trademark Office released its 2014 Interim Guidance on Patent Subject Matter Eligibility. The new guidance supplements the June 24, 2014 Preliminary Examination Instructions that were issued shortly … Continue reading USPTO Announces New Guidance on Post-Alice Subject Matter Eligibility