On January 4, 2019, the United States Patent and Trademark Office (USPTO) released new Patent Examiner Guidance (Guidance) for subject matter eligibility. The updated guidance could benefit any technology patent applicant who has a computer-related invention — from smartphones to artificial intelligence — and who has previously had difficulty acquiring patents under the USPTOʼs procedures for determining patent subject matter eligibility.

The Guidance is intended to provide some much-needed direction for technology patent applicants on how to formulate and prepare their patent applications to avoid potential subject matter eligibility issues. In addition, to the extent subject matter eligibility is raised by an examiner during the review process, the Guidance is intended to now allow patent applicants clearer understanding, and provides a pathway for responding to subject matter eligibility rejections under 35 U.S.C. § 101, particularly for those in the software sector. 

To learn more about the Guidance’s impact on technology innovators, read the TechCrunch Extra Crunch article, “New USPTO Guidance May Clear Path for More Technology Patents,” co-authored by James J. DeCarlo and Chinh H. Pham.

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Photo of James J. DeCarlo James J. DeCarlo

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning

Jim DeCarlo is a Shareholder in Greenberg Traurig’s Intellectual Property and Technology Practice. A registered patent attorney and electrical engineer, he is actively involved in virtually all aspects of intellectual property counseling. Jim started his career in the computer industry, and since transitioning to law has spent over 25 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Jim’s experience includes litigating patent matters in District Courts around the country, handling matters before the PTAB, counseling clients on the strategic use and management of intellectual property assets, and drafting infringement, validity and freedom to operate opinions.

He also counsels clients on the drafting and negotiating of complex technology agreements and directs the prosecution of patent applications in areas such as networking, artificial intelligence, cloud computing, virtual and augmented reality, IoT, streaming media, electronic commerce, Internet search engines, search advertising, client/server systems, mobile and land based telecommunications, and computer software and hardware.

Photo of Chinh H. Pham Chinh H. Pham

Chinh H. Pham is Co-Chair of the Emerging Technology Practice and is a registered patent attorney with experience in the strategic creation, implementation and protection of intellectual property rights for high technology and life science clients, including those in the areas of software,

Chinh H. Pham is Co-Chair of the Emerging Technology Practice and is a registered patent attorney with experience in the strategic creation, implementation and protection of intellectual property rights for high technology and life science clients, including those in the areas of software, artificial intelligence, virtual and augmented reality, blockchain, video gaming, nanotechnologies, medical devices, electro-mechanical devices, telecommunications, data mining, and electronic commerce.

Chinh advises clients, ranging from start-ups to public companies, on the creation, development, and management of patent portfolios, the acquisition and exploitation of intellectual property rights, and identification of risks through intellectual property related opinions. Chinh also counsels clients on IP due diligence through the evaluation of client and competitor portfolios.

In addition, Chinh assists startup clients with strategies for leveraging their IP portfolio for high-value commercial opportunities, facilitating introductions to funding sources, as well as identifying and establishing strategic alliances.

Chinh has been recognized as a “Technology Law Trailblazer” by The National Law Journal, acknowledged as one of the “Top Emerging Tech Lawyer” by TechCrunch, named a leading IP Strategist by IAM Strategy 300, and honored as an “Outstanding 50 Asian Americans in Business,” by the Asian American Business Development Center.