- Posts by Santiago VelezAssociate
Santiago Velez is an associate in Nutter’s Intellectual Property Department. Start-up and multinational corporations rely on Santiago’s broad experience in patent prosecution, litigation and transactional matters to ...
Since 1995, the United States has allowed patent applicants to file provisional applications as an alternative to filing non-provisional utility patent applications (often referred to as “regular” or “conventional” applications). Provisional applications, which are typically less formal and therefore less expensive to prepare, have become a popular initial filing option for applicants seeking patent protection.1 Yet, despite their popularity, deciding whether to first file a provisional versus a regular, non-provisional application remains a dilemma for many companies and inventors. There is, indeed, more than just initial cost to consider in making that decision.
The following are several advantages you should keep in mind when developing your filing strategy and deciding the role to be played by provisional applications. Disadvantages of provisional applications will be covered in a separate, forthcoming post.
Defendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an oversimplification that doesn’t accurately articulate what the claims are actually directed to. This was precisely the government’s error in Thales Visionix Inc. v. United States (Fed. Cir. 2017), where the Federal Circuit found, contrary to the government’s characterization of the claims (which the Claims Court adopted), the asserted claims were not directed to an abstract idea.
As discussed in the latest memorandum, the Federal Circuit in McRO held that the claims at issue are patent eligible under 35 USC § 101 because they are not directed to an abstract idea under the first prong of the two-part Alice test. Under Alice, all claims having an abstract idea are analyzed in two steps:
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.