Intellectual Property Law
New Matter 2018 SUMMER Volume 43, Number 2
Content
- 2018 New Matter Author Submission Guidelines
- Case Comments
- Commentary: Do Proposed Uspto Rules For Claim Construction Go Far Enough?
- Contents
- Copyright News
- Dc Trip Report
- Highway [35 U.S.C. Section] 101: Finding the On-Ramp
- Intellectual Property Section Executive Committee 2017-2018
- Intellectual Property Section Interest Group Representatives 2017-2018
- Ip and Art: An International Perspective
- Letter from the Chair
- Letter from the Editor-in-Chief
- MCLE Self-Study Article
- Online Cle For Participatory Credit
- The California Lawyers Association Intellectual Property Alumni
- The Licensing Corner
- Ttab Decisions and Developments
- Federal Circuit Report
Federal Circuit Report
Rex Hwang
Glaser Weil Fink Howard Avchen & Shapiro LLP
Dan Liu
Glaser Weil Fink Howard Avchen & Shapiro LLP
THE ROLE OF FACTUAL INQUIRY IN DETERMINING PATENT ELIGIBILITY
To determine whether a patent meets the patent eligibility requirement of 35 U.S.C. § 101 under the Alice/Mayo framework, courts first determine whether the claims at issue are directed to patent-ineligible concepts, and if so, whether the claims contain "an inventive concept" sufficient to transform patent-ineligible subject matter into a patent-eligible invention.1 The second step of the test is satisfied if the claims involve more than performance of well-understood, routine, and conventional activities previously known to the industry. Although the ultimate determination of patent eligibility is a question of law, the Federal Circuit’s recent decisions in Berkheimer v. HP and Aatrix v. Green Shades suggest that raising factual disputes, even in the form ofunsubstantiated allegations in a complaint, may be used to prevent early invalidation of patents under § 101.2