Insights

Chicago – December 12, 2024: Crowell partner Marc V. Richards and counsel Adam D. Sussman recently authored the lead chapter in the 2025 edition of the Illinois Institute of Continuing Legal Education’s Intellectual Property Law Handbook. The chapter, titled “Patenting Inventions,” covers the basics of what a patent is and what it can protect, and provides a detailed roadmap for evaluating inventions and the process to obtain a U.S. patent.

The Federal Circuit recently addressed a case of first impression involving AI patented technology under 35 U.S.C. § 101 to hold that “claims that do no more than apply established methods of machine learning to a new data environment” are not patent eligible. This case provides helpful guidance for patent prosecutors on how to draft claims directed to AI technology to be patent-eligible and for litigators on how to attack or defend AI patents.

Examiner interviews are an optional but important and effective part of patent examination process that are beneficially conducted early and, in some cases, more than once during patent prosecution.  Interviews are in-person, telephone or online conferences between the Examiner and the patent attorney or patent agent representing the patent applicant. When conducted early in the patent examination process, interviews may reduce the time required to obtain a patent and increase the odds of obtaining an allowance.  As discussed below, interviews can help foster a cooperative interaction with the examiner to supercharge the prosecution process.

On June 22, 2023, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced the Patent Eligibility Restoration Act of 2023 (“the Bill”), aiming to restore patent eligibility to important inventions across many fields.  Essentially, the Bill is trying to eliminate judicial exceptions to patent eligibility, and provide clear guidance on determining patent eligibility, especially in areas such as medical diagnostics, biotechnology, personalized medicine, artificial intelligence, 5G, and blockchain.  The U.S. Supreme Court has established several judicial exceptions to subject matter eligible for patenting.  Although these exceptions are not enumerated in the statute, the Supreme Court has interpreted 35 U.S.C. § 101 to exclude subject matter from being patented if it falls within any of three areas:  natural phenomena, laws of nature and abstract ideas.  Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).  These judicial exceptions frustrate many IP owners around the world, because many inventions that are eligible for patents in other countries cannot be patented in the U.S. or are ruled invalid in U.S. courts.  Moreover, supporters of this bill argue that leading-edge technologies that give U.S. industry competitive advantages over foreign companies have been difficult to patent in the U.S. under the Court’s rulings.  This legislation reportedly has a good chance to pass in this Congressional session, and companies need to be prepared for the dramatic changes if it becomes law.