37 CFR 42.301 - Definitions

Cite as37 CFR 42.301
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149 practice notes
  • Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
    • United States
    • Federal Register August 20, 2015
    • August 20, 2015
    ...in the payments industry may be necessary for those working on covered business method patent reviews. Another commenter suggests that 37 CFR 42.301(b) should be amended to reflect that both factors for determining a technological invention must not exist for a claim to be found to fail to ......
  • Secure Axcess, LLC v. PNC Bank Nat'l Ass'n, 2016-1353
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 6, 2017
    ...to this court unaccompanied by any regulation except one that, regarding this issue, merely incorporates the statutory language. 37 C.F.R. § 42.301(a). On the question thus presented, the panel opinion in this case adopts a resolution that soundly resolves an ambiguity in the statutory lang......
  • Versata Dev. Grp., Inc. v. SAP Am., Inc., No. 2014–1194.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • July 9, 2015
    ...invention.” § 18(d)(2). The USPTO has by regulation promulgated its version of a definition of a “technological invention.” 37 C.F.R. § 42.301(b). The parties disagree as to whether the invention in this case is such an excepted “technological invention.”Congress, in addition to the specifi......
  • Method Patent Exceptionalism
    • United States
    • Iowa Law Review Nbr. 102-3, March 2017
    • March 1, 2017
    ...149. AIA, Act. Pub. L. No. 112–29, § 18(d)(1), 125 Stat. 284 (2011) (codified as amended in scattered section of 35 U.S.C.). 150. 37 C.F.R. § 42.301(a) (2012). 151. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1323 (Fed. Cir. 2015); see also id. at 1325 (“It might have been help......
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59 cases
  • Secure Axcess, LLC v. PNC Bank Nat'l Ass'n, 2016-1353
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 6, 2017
    ...to this court unaccompanied by any regulation except one that, regarding this issue, merely incorporates the statutory language. 37 C.F.R. § 42.301(a). On the question thus presented, the panel opinion in this case adopts a resolution that soundly resolves an ambiguity in the statutory lang......
  • Versata Dev. Grp., Inc. v. SAP Am., Inc., No. 2014–1194.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • July 9, 2015
    ...invention.” § 18(d)(2). The USPTO has by regulation promulgated its version of a definition of a “technological invention.” 37 C.F.R. § 42.301(b). The parties disagree as to whether the invention in this case is such an excepted “technological invention.”Congress, in addition to the specifi......
  • Blue Calypso, LLC v. Groupon, Inc., Nos. 2015–1391
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 1, 2016
    ...for determining whether a patent is for a technological invention."). In Versata II, we examined the resulting regulation, 37 C.F.R. § 42.301(b), which explains that a patent claims a technological invention if "the claimed subject matter as a whole recites a technological feature that is n......
  • American Express Co. v. Lunenfeld, CBM2014-00050
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • May 22, 2015
    ...the Decision to Institute, that the '451 patent is a covered business method as defined in § 18(a)(1)(E) of the America Invents Act and 37 C.F.R. § 42.301, because at least one claim of the '451 patent is directed to a covered business method. Dec. to Inst. 8-13. B. Constitutionality of Cov......
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88 firm's commentaries
  • Intellectual Property Law Year in Review - March 2018
    • United States
    • JD Supra United States
    • March 5, 2018
    ...Patent Trial and Appeal Board (PTAB) for determining what qualifies as a covered business method (CBM) patent under AIA § 18(d)(1) and 37 CFR 42.301(a) have not always been consistent (see, for example, IP Update, Vol. 20, No. 3; Vol. 19, No. 11; Vol. 19, No. 6; Vol. 19, No. 5; Vol. 19, No.......
  • In Supplemental Examination, Discretion Is the Better Part of Valor
    • United States
    • LexBlog United States
    • July 29, 2019
    ...for CBM review because, in the PTAB’s view, the claimed credit card reward exchange reflected a “financial product or service.” See 37 C.F.R. § 42.301(a). For patents not subject to CBM challenges, however, supplemental examination may yet have value. Signature’s patents would have fared di......
  • In Supplemental Examination, Discretion Is The Better Part Of Valor
    • United States
    • Mondaq United States
    • August 2, 2019
    ...for CBM review because, in the PTAB's view, the claimed credit card reward exchange reflected a “financial product or service.” See 37 C.F.R. § 42.301(a). For patents not subject to CBM challenges, however, supplemental examination may yet have Signature's patents would have fared different......
  • U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act
    • United States
    • JD Supra United States
    • February 16, 2012
    ...for Covered Business Method Patents, 77 Fed. Reg. 7080, 7082 (to be codified as 37 C.F.R. § 42.302). 27 See id. (to be codified as 37 C.F.R. § 42.301). 28 See Transitional Program for Covered Business Method Patents – Definition of Technological Invention, 77 Fed. Reg. 7095, 7096 (Feb. 10, ......
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1 books & journal articles
  • Method Patent Exceptionalism
    • United States
    • Iowa Law Review Nbr. 102-3, March 2017
    • March 1, 2017
    ...149. AIA, Act. Pub. L. No. 112–29, § 18(d)(1), 125 Stat. 284 (2011) (codified as amended in scattered section of 35 U.S.C.). 150. 37 C.F.R. § 42.301(a) (2012). 151. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1323 (Fed. Cir. 2015); see also id. at 1325 (“It might have been help......

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