This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.
During patent prosecution before the United States Patent and Trademark Office (USPTO), applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeals to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice-related issues taken to the PTAB are not necessarily the Alice-related issues decided by the PTAB.
