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New USPTO Guidance May Clear Path for More Technology Patents

By James J. DeCarlo & Chinh H. Pham on April 25, 2019
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On January 4, 2019, the United States Patent and Trademark Office (USPTO) released new Patent Examiner Guidance (Guidance) for subject matter eligibility. The updated guidance could benefit any technology patent applicant who has a computer-related invention — from smartphones to artificial intelligence — and who has previously had difficulty acquiring patents under the USPTOʼs procedures for determining patent subject matter eligibility.

The Guidance is intended to provide some much-needed direction for technology patent applicants on how to formulate and prepare their patent applications to avoid potential subject matter eligibility issues. In addition, to the extent subject matter eligibility is raised by an examiner during the review process, the Guidance is intended to now allow patent applicants clearer understanding, and provides a pathway for responding to subject matter eligibility rejections under 35 U.S.C. § 101, particularly for those in the software sector. 

To learn more about the Guidance’s impact on technology innovators, read the TechCrunch Extra Crunch article, “New USPTO Guidance May Clear Path for More Technology Patents,” co-authored by James J. DeCarlo and Chinh H. Pham.

Photo of Chinh H. Pham Chinh H. Pham

Chinh H. Pham is Co-Chair of the Emerging Technology Practice and is a registered patent attorney with experience in the strategic creation, implementation and protection of intellectual property rights for high technology and life science clients.

Chinh advises clients, ranging from start-ups to

…

Chinh H. Pham is Co-Chair of the Emerging Technology Practice and is a registered patent attorney with experience in the strategic creation, implementation and protection of intellectual property rights for high technology and life science clients.

Chinh advises clients, ranging from start-ups to established companies, on the creation and development of patent portfolios through the preparation and filing of patent applications, the acquisition and exploitation of intellectual property rights through licensing and strategic collaboration agreements, and the preparation of invalidity, non-infringement, and freedom-to-operate opinions. Chinh also counsels clients on IP due diligence through the evaluation of client and competitor portfolios.

Chinh assists startup clients with strategies for leveraging their IP portfolio for high-value commercial opportunities, introducing them to funding sources, either through the venture community or the government, as well as identifying and establishing strategic alliances.

Read more about Chinh H. PhamEmail
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  • Posted in:
    Corporate & Commercial
  • Blog:
    Emerging Technology Views
  • Organization:
    Greenberg Traurig, LLP
  • Article: View Original Source

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