The Revised USPTO Subject Matter Eligibility Guidance: What You Should Know

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

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

How to Claim CLE Credits Per State:

https://knowledgewebcasts.com/how-to-claim-cle-credits-per-state/

CLE State Requirements:

https://knowledgewebcasts.com/cle-state-requirements/

SPEAKER PANEL

Speaker Panel:

Eugene J. Molinelli, Partner
Beusse Wolter Sanks & Maire PLLC

James C. Signor, Member
Leydig, Voit & Mayer, Ltd.

AGENDA

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