Foley Attorneys Explore Alice Patent Eligibility Analysis Divergence

Foley & Lardner LLP attorneys Jack Carroll, Chethan Srinivasa, and Kevin Malaney authored the IP Litigator article, “Alice Patent Eligibility Analysis Divergence Before USPTO and District Court.”

The authors explore the differing applications of the Mayo/Alice framework for patent eligibility at the U.S. Patent and Trademark Office (USPTO) and in district courts, highlight key takeaways from recent cases, and discuss the USPTO’s updated guidance.

“Patent applicants facing § 101 rejections may want to consider strategies for establishing eligibility that take into account not only MPEP and other USPTO guid­ance but also how district courts are approaching similar issues,” the authors conclude. “This could mean providing some analysis beyond on the USPTO’s Step 2A, Prong Two analysis. Depending on the circumstances, such strategies might include creat­ing a record pointing out how any “additional elements” are not routine and conventional and pursuing claims of varying scope within the same patent or across a family. Such a record may be useful in later litigation.”