Tag: Alice

How long should a patent claim be?

House counsel for a large software company has written an open letter to me titled Pursuit of Extremely Short Patent Claims. He has thrown down the gauntlet in a public forum. Here’s what he said to me, followed by my response. 

Patent World Convenes at IPO in Chicago

This week the world of corporate intellectual property (IP) converged in Chicago for the Annual Meeting of the Intellectual Property Owners (IPO) Association. A record 1150 IP lawyers and patent and trademark attorneys attended from the U.S., Europe, Asia, Canada, Latin America,  Australia and Africa. See attached photo (from left to right): Ray Ricordati, Renata Righetti, Richard Beem, […]

Beem Asks USPTO for Better Quality Patent Examination

The U.S. Patent and Trademark Office (USPTO) has proposed a new patent quality initiative. See Director’s Blog and Federal Register. In response, I have submitted a formal comment, Tracking Number 1jz-8ipa-7jnk, as set forth below. I contend that any discussion of quality patents should take into account the need for

#HIMSS15 Health IT, IP & Software Patent

As I write these words, I stand among 41,000 health information technology (HIT) professionals gathered in Chicago for  HIMSS15. As an intellectual property (IP) lawyer, I am here because my clients are here. If you’re at HIMSS15, you are probably engaged in electronic health records (EHR) software, hardware and/or medical devices. Your organization is likely to be active […]

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

Are you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. […]

Obtain Allowance of Software Patent under Alice and Guidelines

Last summer’s Supreme Court decision in Alice v. CLS Bank has had a dramatic effect on the patentability of business method and computer software inventions. In Alice, the Court declared that claims directed to abstract ideas must be analyzed under the framework for determining the patent subject matter it established in the Mayo  and Myriad cases. […]