Scope of Patentable Subject Matter: What You Need to Know

Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.  Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.

Mr. Macedo is currently co-Chair of the Amicus Committee of the Association.  He has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Mayo v. Prometheus (at the Supreme Court), Association of Molecular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’l v. Alice (at the Federal Circuit en banc and at the Supreme Court in the petition and merits brief stage). Mr. Macedo was also principal attorney for amicus submissions to the full court of the Federal Circuit and the U.S. Supreme Court in In re Bilski and Bilski v. Kappos.  He has successfully litigated and defended patents directed to computer implemented methods and systems for processing financial transactions, and he will be discussing Supreme Court and Federal Circuit Cased Regarding Abstract Ideas.

Mr. Macedo holds bachelor’s and master’s degrees in physics from The Catholic University of America and a law degree from Columbia Law School, both of which he graduated with honors.

Raul Tamayo joined the USPTO in 2007 as a legal advisor in the Office of Patent Legal Administration (OPLA). He became a senior legal advisor in 2012. As a senior legal advisor, Mr. Tamayo is involved with many projects, including administration of the Patent Term Restoration provisions of the Hatch-Waxman Act, administration of Patents’ compliance with rulemaking considerations, such as the Paperwork Reduction Act, and implementation of pilot programs, such as Quick Path IDS and After Final Consideration 2.0. Mr. Tamayo has recently focused on subject matter eligibility under 35 U.S.C. 101, and is part of the team tasked with implementing eligibility policy in the wake of the Supreme Court’s Alice and Myriad decisions.

Prior to joining the USPTO, Mr. Tamayo spent over 8 years in private practice at Sughrue Mion, PLLC, in Washington, DC. 

Maria Luisa Palmese is a partner at Kenyon & Kenyon LLP.  Ms. Palmese represents clients in both complex IP litigation  and high stakes prosecution matters, with a particular focus in the life sciences.  Ms. Palmese maintains a global practice and has substantial experience in preparing and trying complex cases as well as counseling small and medium sized businesses in using IP to create value.   Ms. Palmese is closely following developments in the area of patent-eligibility, in particular as it relates to the life sciences, including regenerative medicine, biotechnology, cosmetics and materials.  Ms.  Palmese received her BS from MIT in chemistry and her JD from Columbia Law School.  She also holds an LLM from the Munich Intellectual Property Center. She can be reached at mpalmese@kenyon.com or 1.212.908.6444.