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3 steps to avoiding patent-eligibility challenges

When you create a new product or technology that you want to protect, the logical solution is to apply for a patent. However, many people are still unclear as to what types of ideas United States patent laws actually protect. 

A recent example that highlights this issue pertains to a media coding invention developed by Ericsson Inc. They secured patents for their invention in over 90 other countries, but nevertheless faced considerable challenges here in the U.S. to prove that their invention was eligible for coverage under our own patent laws. The U.S. Patent Office rejected their application multiple times.

Unclear laws make it easier for someone to steal your idea and challenge your patent

The Supreme Court has avoided giving a clear definition of what type of subject matter is and is not considered patent eligible. They have held that there are exceptions to the patent-eligibility law in cases such as: 

  • Laws of nature 
  • Natural phenomena 
  • Abstract ideas 

However, they have not explicitly defined the scopes or limitations of those three exceptions. 

The lack of clarity may make it both more difficult to acquire a patent and also more difficult to defend the patent once it’s granted. Additionally, the noticeable lack of clarity and confusion could make you more susceptible to infringement allegations or see reduced strength should you attempt to allege infringement or should someone, such as a competitor, challenge the granted patent in court.   

It is a particular problem for companies working with relatively new technologies

Many lawmakers struggle to fully understand cutting-edge technology, such as artificial intelligence or bioinformatics, let alone attempting to incorporate them into existing legal definitions. 

The following three steps can help you reduce the possibility of running into these issues: 

  • Make sure you understand the current guidance from the Patent Office used to assess patent eligibility; 
  • Make sure you present the necessary information to show why your invention is eligible; and 
  • Make sure the patent examiner assigned to your application is also in compliance with the latest rules. 

Patent-eligible subject matter is a complex issue, and you should not try to understand it alone. Experienced legal advice can be crucial – contact Patterson Thuente IP with questions about your inventions and navigating the complicated landscape of patent eligible subject matter. 





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