The Revised Section 101 and 112 Guidance from USPTO: Opportunities and Challenges for Patent Applicants
On January 7, 2019, the revised United States Patent and Trademark Office (USPTO) guidance on sections 101 and 112 took effect. The revised 101 guidelines entitled, “2019 Revised Patent Subject Matter Instructions on Eligibility” changed the application of the initial step in the Alice/Mayo test while the 2019 Revised Section 112 Guidance provided instructions on how to apply sections 112(f) and 112(b) for computer-implemented innovations.
Although the updated guidance documents can produce more patent-eligible claims, it is expected that scrutiny of computer-implemented inventions will be more rigorous. Patent applicants and their counsel should have the updated knowledge on how to navigate the newly revised section guidelines to ensure compliance, thus, maximizing business opportunities.
Our panel of leaders and practitioners will offer a discussion of the significant updates and issues surrounding the revised section guidelines. This LIVE Webcast aims to help firms and related professionals better understand how to ensure compliance with the newly revised sections.
Key topics include:
- Revised Guidance on Sections 101 and 112 – What’s New?
- Implications for Patent Applicants
- Recent Cases
- Best Compliance Practices
Arshid A. Sheikh, Partner
Condo Roccia Koptiw, LLP
- USPTO’s January 2019 revised patent subject matter eligibility Guidance on § 101 (“2019 PEG”)
- PTAB cases applying 2019 PEG
- Recent Federal Circuit § 101 cases
- USPTO’s Revised 112 Guidance regarding computer-implemented inventions
Edward A. Pennington, Partner
Smith, Gambrell & Russell, LLP
- Whether district courts and the Federal Circuit will give deference to any PTO Guidance.
- Whether patents issuing under revised PTO Guidance have a better chance of standing up in court than those issuing under prior PTO Guidance.
- Whether patent owners have to operate in parallel, non-synchronized universes: the PTO, and the federal courts.
Kevin Repper, Senior Patent Counsel
Dunlap Bennett & Ludwig PLLC
- Overview of October 2019 revised guidance
- Main differences between October 2019 and January 2019 revised guidelines
- Reasons behind issuing the new guidance
- Key takeaways
Who Should Attend:
- Design Patent Lawyers and Consultants
- Patent Agents
- Patent Examiners
- Patent Lawyers and Consultants
- Intellectual Property Lawyers and Consultants
Arshid Sheikh is a patent attorney and a partner at Condo Roccia Koptiw LLP (www.condoroccia.com) with over 10 years of experience in patent procurement, patent litigation, and infringement analysis. Based in Philadelphia, Arshid represents and counsels clients before the USPTO in patent examination and post-grant proceedings. Arshid also provides opinions and strategic guidance to clients on infringement, validity, and enforceability.
Arshid’s experience includes representing clients in the electrical, electronics, telecommunications, cloud computing, and e-commerce industries. Before becoming a patent attorney, Arshid worked as a Systems Engineer in various fields of telecommunications engineering.
Arshid Sheikh is a patent attorney and a partner at Condo Roccia Koptiw LLP (www.condoroccia.com) with over 10 years of …
Kevin Repper is senior counsel at Dunlap Bennett & Ludwig PLLC. Kevin’s practice focuses on intellectual property law, including patent prosecution and patentability and infringement opinions. He has extensive experience in patent law, having filed and prosecuted hundreds of patent applications over the past 8 years.
Kevin has experience prosecuting patents in a wide variety of technologies, such as mechanical, electrical, biotech and chemical arts. In particular, Kevin has experience working with therapeutic and diagnostic pharmaceuticals, analyte test kits, medical and dental implants, agricultural aeroponic systems, lasers and optical scanning devices, chemical filters, fuel cells and various software inventions.
Kevin earned a Bachelor of Science degree in Biology from Christopher Newport University. He earned his Juris Doctor degree from University of New Hampshire School of Law. At the University of New Hampshire, Kevin was awarded a Certificate in Intellectual Property Law from the Franklin Pierce Center for Intellectual Property by completing a rigorous curriculum involving patent, trademark and copyright law.
Kevin Repper is senior counsel at Dunlap Bennett & Ludwig PLLC. Kevin’s practice focuses on intellectual property law, including patent …
Edward A. Pennington is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP. Mr. Pennington has worked exclusively in the field of intellectual property for close to 30 years. During that time he has successfully tried many jury cases to verdict, both on the plaintiff’s side and the defense, in a wide range of technical fields including biotechnology, wireless communication and networking, computer architecture and hardware, software implementing a wide variety of functionality, navigation devices, encryption and cryptography, medical devices, automotive components, ceramic materials and metal alloys, and nuclear engineering. While most of his litigation occurs in federal court, he has tried royalty disputes in state court, and has tried patent cases in the International Trade Commission. His clients over the years have included major universities, U.S. governmental research laboratories, Fortune 50 companies, and independent inventors.
Edward A. Pennington is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP. Mr. Pennington has …
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Method of Presentation:
General knowledge of patent laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Condo Roccia Koptiw, LLP
Condo Roccia Koptiw LLP is a 20-attorney intellectual property (IP) boutique in Center City Philadelphia, representing clients in all intellectual property disciplines, with expertise in electrical engineering, computer software, biochemistry, chemistry and mechanical engineering. The firm paradigm of nimbleness and reduced infrastructure results in savings that are passed to clients through lower rates and to its attorneys through better compensation. Since its founding in 2011, the firm has more than tripled in size and expanded to several new practice areas. For more, please go to http://www.condoroccia.com.
About Dunlap Bennett & Ludwig PLLC
Dunlap Bennett & Ludwig is a veteran-owned law firm with a global footprint. Dunlap Bennett & Ludwig lawyers provide businesses and individuals with a full array of business and estate legal services. We are straight talking advisers and zealous advocates for those we represent. We invest in success by establishing long-term relationships with clients built on trust in our abilities. We are not just your lawyers--our depth of experience includes lawyers who are also business owners, patent-holders, military veterans, commercial pilots, prosecutors, aerospace engineers, MBAs, and scholars.
About Smith, Gambrell & Russell, LLP
Smith, Gambrell & Russell, LLP is a full service, international law firm that advises regional, national and global businesses and individuals on a wide range of legal matters. The Firm’s attorneys provide legal counsel in more than 45 specialized practice areas, including corporate transactions, litigation, intellectual property, aviation, banking, construction and employment law.
Founded in 1893, Smith, Gambrell & Russell serves corporate counsel and corporations across the globe from offices in Atlanta, Georgia; Austin, Texas; Jacksonville, Florida; London, U.K.; Los Angeles, California; Munich, Germany; New York, New York; Southampton, U.K.; and Washington, D.C.
The firm’s innovative professionals thrive on providing clients with guidance and support to achieve their business goals by offering a comprehensive, diverse range of commercial and business-oriented services. Our client profile includes large and mid-sized, public and private, and domestic and international companies, in a variety of industries. SGR distinguishes itself on three factors: predictability, responsiveness and value.