Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts
Recent Supreme Court (SC) decisions on Patent Eligibility and their influence on the Federal Circuit, district courts and the United States Patent and Trademark Office are having profound effects on patents relating to diagnostics, DNA, business methods, purified natural products and computer-based processes. The reduction in the scope of patent eligible subject matter is invaliding granted patents and limiting the ability to obtain patents for inventions in both the life science and high technology industries.
Currently, questions on patent eligibility continue to grow among patent owners and related industry, considering that some existing cases are yet to be reviewed and decided upon. It is also equally important to know how the previous SC rulings will affect decisions on such cases, and how it will impact on succeeding matters in connection with patentability, especially for drug manufacturing companies.
In this LIVE Webcast, a panel of key thought leaders organized by The Knowledge Group will provide an overview to help you understand the critical elements of the impacts of recent Supreme Court rulings on the general perspective of patent eligibility. Speakers will also provide an in-depth discussion of the SC patent eligibility decisions and their specific aftermath in 2017 and beyond.
- Overview of Significant Recent Patent Eligibility Decisions:
- Mayo Collaborative Servs. v. Prometheus Labs., Inc.
- Assoc. for Molecular Pathology v. Myriad Genetics, Inc.
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l
- Sequenom v. Ariosa
- In-depth Discussion of Influence of Supreme Court Cases on USPTO
- Recent Patent Eligibility Cases in district court and the Federal Circuit
- Significant Insights on the Possible Impacts of Decisions in 2017
Dr. Kenneth H. Sonnenfeld, Partner
King & Spalding LLP
- Discussion of pharma cases decided in 2016
- Cases before SCOTUS and federal circuits that may help focus Mayo/Alice test
- Need to encourage new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena
- Proposal for research exemption to patent infringement for medical research
Jo Dale Carothers, Ph.D., Shareholder
- Hi-tech litigation trends, decisions both ways
- Need for clarity on eligibility of software technology inventions
- Cases to watch in Federal Circuit, e.g. McRO/Planet Blue; Intellectual Ventures v. Symantec; Thales Visionix v. USA
Eli Mazour, Attorney
Harrity & Harrity, LLP
- High rates of hi-tech patent invalidation in courts and PTAB
- Discussion of cases as teaching examples
- Impact of litigation on patent prosecution
Who Should Attend:
- Patent Attorneys
- Intellectual Property Lawyers
- Patent Consultants
- Patent Licensing Attorneys
- Patent Litigators
- Patent Holders
- Private Companies
- Other Related Professionals
Kenneth Sonnenfeld is recognized as one of the nation’s leading intellectual property lawyers in the field of biotechnology and pharmaceutical patent law. IAM Patent 1000 World’s Leading Patent Professionals guide has consistently ranked Dr. Sonnenfeld among its list of leading practitioners in the world. Chambers USA ranked him in its 2016 Guide and says he is “recommended for his advice to clients on patent prosecution and IP-related commercial transactions”.
Dr. Sonnenfeld is a partner in the Intellectual Property Group in the New York office. He has been practicing biotechnology and pharmaceutical patent law for almost 30 years. His practice focuses on various interparty matters including due diligence, litigation, foreign oppositions and licensing. He also handles complex strategic patent prosecution in the United States Patent & Trademark Office as well as supervising foreign prosecution. Dr. Sonnenfeld represents both large multinational corporations and startup companies.
Kenneth Sonnenfeld is recognized as one of the nation’s leading intellectual property lawyers in the field of biotechnology and pharmaceutical …
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including patents (ownership, infringement/non-infringement, validity/invalidity, patentability, and proceedings before the United States Patent and Trademark Office (USPTO)), trade secrets and copyrights. Her practice emphasizes patent and trade secret litigation, licensing, contract disputes, and issues related to proceedings before the USPTO in all fields, with a special emphasis on electronics, embedded systems and high performance computing, Wi-Fi enabled devices, energy management, microprocessors/microcontrollers, memory devices, wireless communications devices and protocols, smartphones and smart TVs (along with applications), in-home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software for numerous applications. Jo Dale has represented companies in litigation in numerous federal district courts and state courts across the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC).
Before joining Weintraub Tobin in 2014, Jo Dale spent many years as a partner in Big Law firms. Prior to becoming an attorney, Jo Dale was a tenured professor of Electrical and Computer Engineering at the University of Arizona and served as an expert witness in intellectual property litigation. Her research lab at the University of Arizona developed patented technology that was used to decode images from Mars in the Mars Pathfinder Mission, which was the first of a series of missions to Mars that included rovers.
In 2014, 2015, and 2016 Jo Dale was selected as a San Diego Super Lawyer by Super Lawyers Magazine.
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation …
Eli Mazour’s practice focuses on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. Eli has extensive experience in all aspects of patent prosecution, including preparing and prosecuting hundreds of patent applications related to computer software, Internet and e-commerce, telecommunications, networking devices, electronic consumer products, and medical devices.
Eli has particular expertise in developing and implementing innovative patent prosecution strategies for reaching favorable results at the U.S. Patent and Trademark Office. He also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions.
Eli Mazour’s practice focuses on helping large technology companies build valuable, high-quality patent portfolios in an efficient manner. Eli has …
Print and review course materials
Method of Presentation:
Experience in patent law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About King & Spalding LLP
Celebrating more than 130 years of service, King & Spalding is an international law firm that represents a broad array of clients, including half of the Fortune Global 100, with more than 1,000 lawyers in 19 offices in the United States, Europe, the Middle East and Asia. The firm also represents hundreds of clients with new ventures and mid-sized companies in emerging industries.
Long-standing client relationships are one of the surest barometers of a law firm’s success in meeting its clients’ needs for legal services. King & Spalding lawyers pride themselves on developing continuing client relationships that are productive, professional and collegial. The firm is considered among the top 12 U.S. law firms that general counsel rely on as their go-to outside counsel, according to BTI Consulting Group’s annual Brand Elite report.
About Weintraub Tobin
Great ideas take many shapes and are the impetus for great commercial endeavors. Weintraub Tobin’s Intellectual Property team works with national and global companies, start-up ventures, and individuals in all aspects of intellectual property. Experienced in a broad range of industries, including electronics, communications, software, digital media, entertainment, biotechnology, chemistry, mechanical systems, and fashion, Weintraub Tobin handles litigation and transactions involving protection, ownership, acquisition, licensing, infringement, and validity of patents, trademarks, and copyrights. The attorneys file and prosecute patent and trademark applications in the U.S. and internationally, handle disputes in the USPTO, and litigate cases in courts throughout the country.
Weintraub Tobin has a reputation for structuring cutting-edge transactions and resolving IP disputes. Large and diverse enough to deliver a powerful punch both inside and outside the courtroom, Weintraub Tobin is nimble enough to provide innovative strategies to help their clients thrive in the global marketplace. Efficient and cost-effective, Weintraub Tobin is the go-to firm for creative minds and inventive businesses.
About Harrity & Harrity, LLP
Harrity & Harrity is an IP boutique that has been specializing in the preparation and prosecution of electrical and mechanical patent applications since 1999. Our services include patent preparation and prosecution, patent opinions, patent reexamination, patent reissue, patent quality support, patent analytics, and patent preparation and prosecution training.
Quality is the area that truly separates us from our peers. We pride ourselves on consistently delivering high quality through the use of a thorough second attorney review process and a uniform writing style that is tailored to our clients’ needs. At Harrity & Harrity, we say that We Patented Quality®, and the second attorney review process and the uniform writing style ensure that we provide our clients with the highest quality patent preparation and prosecution services each and every time.