Section 101 Subject Matter Eligibility Guidance
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The law firm of Tysver Beck Evans provides the following guidance relating to subject matter eligibility (Section 101). In particular, the Guidance analyzes the test for patentability provided by the Supreme Court in its Alice decision, and how to argue against a rejection of a patent application on the grounds of an invention being abstract or directed to a natural phenomenon.
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.
Section 101 Rejections
Four statutory categories under Section 101
Non-statutory exceptions to subject matter eligibility
Overview of the Alice text
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
Overview--Searching for an "inventive concept"
Evaluating the "conventionality" of the claim elements
What is enough for inventive concept?
The machine-or-transformation test
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.