Patent Guidance, from the attorneys of Tysver Beck Evans

The law firm of Tysver Beck Evans provides the following guidance for companies and individuals looking to maximize protection for their innovation.

Guidance on Patent Prosecution--Section 101 (Patent Subject Matter Eligibility)

The following pages provide guidance on how to analyze and respond to section 101 rejections at the patent office, or section 101 claims of invalidity against issued patents.

What is a Section 101 Rejection

Section 101 Rejections

Four statutory categories under Section 101

Non-statutory exceptions to subject matter eligibility

Overview of the Alice text

Applying Step One of the Alice test

Overview of step one of the Alice test

Analyzing step one for abstract ideas

Analyzing step one for natural phenomena

Applying the Markedly Different Characteristics test

Applying Step Two of the Alice test

Overview--Searching for an "inventive concept"

Evaluating the "conventionality" of the claim elements

What is enough for inventive concept?

The machine-or-transformation test

How to argue against a Section 101 Rejection

Responding to a statutory rejection (outside four categories)

Proving patent eligibility under step one

Proving patent eligibility under step two

Legal Stuff

Of course we have to have some caveats and limitations here:

The legal information provided in Bitlaw Guidance should be distinguished from actual legal advice. Legal information is a description of the law and how it might apply to various hypothetical situations. Legal advice is advice given by a licensed attorney about how the law applies to your situation. Legal advice can be relied upon to make decisions. Legal information--even that found in Bitlaw Guidance--is not actual legal advice that should be relied upon. Since every fact situation is different, we encourage you to contact a qualified attorney before making any decision on how to handle your particular situation. Of course, the attorneys at Tysver Beck Evans would be happy to help you.

So if you can live with that bit of hedging, we think you will find the various topics of Bitlaw Guidance to be of sufficient interest and informative value to help guide you along a path to making better and informed decisions about your intellectual property.

This guidance is provided by the attorneys of Tysver Beck Evans. Please contact us if you need help protecting your intellectual property. The legal information provided in this guidance should be distinguished from actual legal advice. Please see the Guidance index page for more information.