Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections
Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not surprisingly, this has led to some confusion among both practitioners and patent examiners on how to apply the two-part test from a practical standpoint. However, if there is a glimmer of hope for patent owners, it lies in a number of recent cases that have countered subject matter eligibility rejections by the PTO.
In Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections, Blank Rome Partner Jon Grossman and Associates Anastasia Dodd and Alexander S. Perry present a comprehensive analysis of 12 key cases that have upheld software patent eligibility, and provide concrete recommendations on how to effectively handle software inventions in the post-Alice era before the PTO.
This whitepaper was reprinted in the August 2018 edition of Intellectual Property & Technology Law Journal (Vol. 30, No. 8), a Wolters Kluwer publication.
Part II was featured in the September 2018 edition.