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 U.S. Court of Appeals for the Federal Circuit has relaxed the standard and clarified the analysis for the showing of a nexus to a patented invention when patent licenses are presented as objective indicia of nonobviousness.

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.