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TitleFederal Circuit’s Unconventionality Approach to Patent-Ineligibility Challenges in a Motion to Dismiss
Creator陳秉訓
Chen, Ping-Hsun
Contributor科管智財所
Key WordsPatent-eligibility;35 U.S.C. § 101; inventive concept;unconventional;non conventional
Date2021-07
Date Issued11-Apr-2022 14:32:17 (UTC+8)
SummaryUnder Alice Corp. Pty. v. CLS Bank International, when a claim is found directed to a patent-ineligible subject matter, the claim is still patent-eligible if it includes an inventive concept. The Federal Circuit’s case law has indicated that an alleged inventive concept with unconventionality may satisfy step two of the Alice standard. Specifically, this paper demonstrates that the case law suggests a way to prove such unconventionality. That is, a patent specification or a patentee’s complaint must include four topics: (1) prior art technology; (2) how a system executing the claimed invention performs differently from the prior art technology; (3) the benefits derived from the claimed unconventional system; and (4) a specific feature operating differently from the prior art technology. With these factual statements, a patent may survive a patent-ineligibility challenge in a motion to dismiss.
patent-ineligible subject matter, the claim is still patent-eligible if it includes an
inventive concept. The Federal Circuit’s case law has indicated that an alleged
inventive concept with unconventionality may satisfy step two of the Alice standard.
Specifically, this paper demonstrates that the case law suggests a way to prove such
unconventionality. That is, a patent specification or a patentee’s complaint must
include four topics: (1) prior art technology; (2) how a system executing the claimed
invention performs differently from the prior art technology; (3) the benefits derived
from the claimed unconventional system; and (4) a specific feature operating
differently from the prior art technology. With these factual statements, a patent
may survive a patent-ineligibility challenge in a motion to dismiss.
RelationUIC Review of Intellectual Property Law, Vol.20, No.4, pp.331-357
Typearticle
dc.contributor 科管智財所
dc.creator (作者) 陳秉訓
dc.creator (作者) Chen, Ping-Hsun
dc.date (日期) 2021-07
dc.date.accessioned 11-Apr-2022 14:32:17 (UTC+8)-
dc.date.available 11-Apr-2022 14:32:17 (UTC+8)-
dc.date.issued (上傳時間) 11-Apr-2022 14:32:17 (UTC+8)-
dc.identifier.uri (URI) http://nccur.lib.nccu.edu.tw/handle/140.119/139804-
dc.description.abstract (摘要) Under Alice Corp. Pty. v. CLS Bank International, when a claim is found directed to a patent-ineligible subject matter, the claim is still patent-eligible if it includes an inventive concept. The Federal Circuit’s case law has indicated that an alleged inventive concept with unconventionality may satisfy step two of the Alice standard. Specifically, this paper demonstrates that the case law suggests a way to prove such unconventionality. That is, a patent specification or a patentee’s complaint must include four topics: (1) prior art technology; (2) how a system executing the claimed invention performs differently from the prior art technology; (3) the benefits derived from the claimed unconventional system; and (4) a specific feature operating differently from the prior art technology. With these factual statements, a patent may survive a patent-ineligibility challenge in a motion to dismiss.
patent-ineligible subject matter, the claim is still patent-eligible if it includes an
inventive concept. The Federal Circuit’s case law has indicated that an alleged
inventive concept with unconventionality may satisfy step two of the Alice standard.
Specifically, this paper demonstrates that the case law suggests a way to prove such
unconventionality. That is, a patent specification or a patentee’s complaint must
include four topics: (1) prior art technology; (2) how a system executing the claimed
invention performs differently from the prior art technology; (3) the benefits derived
from the claimed unconventional system; and (4) a specific feature operating
differently from the prior art technology. With these factual statements, a patent
may survive a patent-ineligibility challenge in a motion to dismiss.
dc.format.extent 508429 bytes-
dc.format.mimetype application/pdf-
dc.relation (關聯) UIC Review of Intellectual Property Law, Vol.20, No.4, pp.331-357
dc.subject (關鍵詞) Patent-eligibility;35 U.S.C. § 101; inventive concept;unconventional;non conventional
dc.title (題名) Federal Circuit’s Unconventionality Approach to Patent-Ineligibility Challenges in a Motion to Dismiss
dc.type (資料類型) article