Alex Wolcott

Latest Articles

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

December 11, 2019

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling system (IHS) would perform a natural language processing (NLP) analysis on multiple web sites containing threaded discussions of a particular…

Global IP & Technology Law Blog

New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

By Alex Wolcott

January 23, 2019

On January 7, 2019, the United States Patent and Trademark Office (“USPTO”) released its 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), which revises the procedures for determining whether a patent claim is directed towards a judicial exception. Based upon post-Alice Federal Circuit decisions, the Guidance modifies the grouping of abstract ideas, and adds an intermediate step to determine whether a judicial exception is integrated into a practical application of the judicial exception.…

Global IP & Technology Law Blog

Failure To Name Joint Inventors May Bar Patentability

By Alex Wolcott, Christopher Adams & Jeremy Dutra

May 20, 2018

Following a rejection by the United States Patent and Trademark Office (“USPTO”) under section 102(f) for a rehabilitative dog harness, the Federal Circuit recently affirmed the rejection because the applicant “did not himself solely invent the subject matter sought to be patented.” In re VerHoef, No. 2017-1976 (Fed. Cir. May 3, 2018). Jeff VerHoef built a prototype harness to remediate walking difficulties that his dog developed post-surgery. VerHoef recognized that the harness would work…

Global IP & Technology Law Blog

Incorporation by Reference Is Not a Substitute for a Specific Priority Claim

By Alex Wolcott

April 25, 2018

Under 35 U.S.C. § 120, an application claiming benefit to the filing date of an earlier application must include a “specific reference” to the earlier filed application. In Droplets, Inc. v. E*TRADE Bank, No. 2016-2504, 2016-2602 (April 19, 2018), the Federal Circuit considered the use of incorporation by reference when asserting priority claims. The Federal Circuit’s decision highlights the inapplicability of incorporation by reference as a means of asserting priority and the need…

Global IP & Technology Law Blog

USPTO Continues Outreach on Patent Subject Matter Eligibility with Recap of Roundtable Discussions

By Alex Wolcott

August 14, 2017

The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with a variety of measures that attempt to ensure that 35 U.S.C. § 101 is implemented in a way that is…

Global IP & Technology Law Blog

Patent Trial and Appeal Board Reverses Subject Matter Eligibility Rejections Based on Incomplete Analysis

By Alex Wolcott

March 9, 2017

Last week, the Patent Trial and Appeal Board (“Board”) issued two decisions reversing final rejections under 35 U.S.C. § 101. Rather than performing an in-depth analysis of the claimed subject matter, the Board based these reversals on an incomplete subject matter eligibility analysis by the examiner. These appeals originated from Art Unit 3690, which focuses on finance business methods. In December 2016, the USPTO released three fact patterns to demonstrate complete analyses of eligible and…

Global IP & Technology Law Blog

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

By Alex Wolcott

December 29, 2016

As a follow-up from November’s roundtable discussion, the United States Patent and Trademark Office (“USPTO”) held its second roundtable discussion on the current state of subject matter eligibility under 35 U.S.C. §101. This meeting focused on the legal boundaries of subject matter eligibility, versus earlier considerations of technicalities and challenges in applying the recent developments in §101. As expected, this roundtable featured a number of leading corporate stakeholders, including Intel, Amazon, Oracle, Myriad, Google,…

Global IP & Technology Law Blog

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

By Alex Wolcott

November 22, 2016

Following the recent Federal Circuit decisions in BASCOM and McRO, the United States Patent and Trademark Office (“USPTO”) responded by providing all stakeholders with a helpful memorandum discussing these cases and how they affect patent subject matter eligibility. In addition, the USPTO continues its outreach efforts to identify where gaps exist in its guidance, and to incorporate public feedback into subsequent guidance. On Monday, November 14, the USPTO hosted the first of two roundtable discussions…

Alex Wolcott

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

New Examples Demonstrate the USPTO’s Revised Subject Matter Eligibility Guidelines for Patents

Failure To Name Joint Inventors May Bar Patentability

Incorporation by Reference Is Not a Substitute for a Specific Priority Claim

USPTO Continues Outreach on Patent Subject Matter Eligibility with Recap of Roundtable Discussions

Patent Trial and Appeal Board Reverses Subject Matter Eligibility Rejections Based on Incomplete Analysis

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

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