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Intellectual Property Litigation Patent Litigation United States Supreme Court

Alice and Incongruity In PTAB Appeals

This article discusses the significant contrast between consideration of issues related to the U.S. Supreme Court’s decision in Alice Corp. v. CLS Int’l in prosecution and their resolution by the PTAB.

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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.

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