Overview:
In January 2019, the United States Patent and Trademark Office (USPTO) issued a revised guidance to be used when evaluating subject matter eligibility and updated same in October 2019. The revised and updated guidelines primarily focus on patent eligibility procedures involving patent claims and applications. By providing new guidance in identifying whether a patent claim or patent application claim is directed to a judicial exception, it aims to bring better clarity and predictability to Step 2A of the Alice/Mayo test.
While the revised guidelines are viewed to improve patent approvals, the possibility of being invalidated by courts, if challenged, still remains.
In this LIVE Webcast, patent lawyers Eugene J. Molinelli (Beusse Wolter Sanks & Maire) and James C. Signor (Leydig, Voit & Mayer) will provide the audience with a thorough analysis of the fundamentals of USPTO’s revised subject matter eligibility guidance. As experts, the speakers will present current and emerging issues surrounding this significant topic and provide helpful tips in preventing challenges of invalidation.
Key topics include:
- Overview of USPTO’s New Subject Matter Eligibility Guidelines
- Trends, Developments, and Updates
- Opportunities and Pitfalls
- Recent Court Decisions
- What Lies Ahead
Credit:
Course Level:
Intermediate
Advance Preparation:
Print and review course materials
Method of Presentation:
On-demand Webcast (CLE)
Prerequisite:
General knowledge of intellectual property laws
Course Code:
148149
NY Category of CLE Credit:
Areas of Professional Practice
Total Credits:
1.5 CLE
CLE State Requirements:
Speaker Panel:
Eugene J. Molinelli, Partner
Beusse Wolter Sanks & Maire PLLC
James C. Signor, Member
Leydig, Voit & Mayer, Ltd.
Agenda:
SEGMENT 1:
Eugene J. Molinelli, Partner
Beusse Wolter Sanks & Maire PLLC
- Analysis under Alice/Mayo
- Step 1 statutory category
- Step 2A not “directed to”-- two prongs
- Prong 1: does not recite exception
- Prong 2: recites, but has practical application (improves technology)
- Step 2B “significantly more”
- Diagnostics
- Treatment is significantly more
- New assay (sensor) is significantly more
- Software
- Under January 2019 guidelines
- Equations are abstract ideas
- Need for improvement to technology
- Examiners have required improvement over EVERY prior art technology
- SC refusal to reconsider CAFC cases
- McRO stands as most favorable CAFC law for software
- Equations are not really always abstract ideas under SC jurisprudence – otherwise danger if novelty in equations/algorithm and otherwise use standard equipment and general-purpose computer (like McRO)
- No requirement for patents to be better – only different, therefore no need to prove better than everything else
- Under October 2019 guidelines
- Equations are still abstract ideas – declined to consider type of equation
- Need for improvement over relevant technology
- Examiner may only require improvement over ANY prior art technology
- Under January 2019 guidelines
SEGMENT 2:
James C. Signor, Member
Leydig, Voit & Mayer, Ltd.
- Evolution of Alice at the USPTO and Federal Circuit
- Shift in focus at USPTO from 101 to 112
- New categories of abstract ideas
- Practical tips for drafting applications and claims
- October 2019 update and what to expect going forward
Date & Time:
Tuesday, March 10, 2020
12:00 pm to 1:30 pm (ET)
Who Should Attend:
- Patent Attorneys and Consultants
- IP Attorneys & Consultants
- Patent Owners
- Patent Applicants
- Patent Examiners
- Patent/IP Managers and Officers
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