HomeWebcastDrafting Software Patents Amidst the Heightened Standard: The Alice v. CLS Bank Aftershock
Software Patents; Heightened Standard CLE

Drafting Software Patents Amidst the Heightened Standard: The Alice v. CLS Bank Aftershock

Live Webcast Date: Wednesday, September 28, 2016 from 3:00 pm to 5:00 pm (ET)
Intellectual Property Law (CLE)Recording

Software Patents; Heightened Standard

The Alice decision in 2014 have brought significant changes in how the United States Patent and Trademark Office (USPTO) examines patent applications, particularly in the fields of software and other computer-implemented technologies. As the decision continues to alter the landscape of patent eligibility, assessing the value of software patents becomes more challenging. The aftermath of the so-called ‘Alice Storm’ has invalidated many software and other abstract patents at an alarming rate. Additionally, patent owners and developers are also being vigilant in keeping an eye on how Alice is being interpreted by the USPTO.

In this two-hour Webcast, a panel of distinguished professionals and thought leaders assembled by The Knowledge Group will provide the audience with an in-depth discussion of effectively drafting software patents amidst the increasingly heightened standard of review while avoiding the common pitfalls in ensuring a solid footing on software applications and claims. Speakers will also offer best practices in software patent valuation methodology and strategies for damages recovery in litigation. 

Key issues that will be covered in this course are:

  • Patent Valuation for Software Inventions – An Overview
  • Software Patentability Framework
  • Possible Challenges to Software Patents
  • Patent Protection and Restriction
  • Potential Lawsuits Against Patent Infringements
  • Recent Litigation
    • Alice Corporation v CLS Bank International
    • Intellectual Ventures v Capital One
    • Enfish LLC v. Microsoft Corp.
    • Bascom Global Internet v. AT&T Mobility LLC
  • Best Practices

Agenda

Neil C. Maskeri, Attorney
Volpe and Koenig, P.C.
  • Recent developments including the May 2016 Subject Matter Eligibility update from the USPTO, Enfish, TLI, and Bascom
  • Background analysis of 101 and Post-Alice eligibility analysis
  • How to draft a Detailed Description to avoid post-Alice issues
  • Using figures strategically to avoid post-Alice issues

Nathan F. Phares, Attorney
Harrity & Harrity, LLP
  • How did Alice change the best practices for drafting software patents?
  • How have favorable post-Alice decisions changed the approach to drafting specifications and claims?
  • How can you get the information you need from inventors to draft a quality patent application?

Sucheta Chitgopekar, Attorney
Meredith Keyhani, PLLC
  • Responding to Office Actions after Alice
  • Best Practices
  • Analysis of software inventions that survived Alice
  • Hardware as a new backdoor for software inventions

Who Should Attend

  • Patent Attorneys
  • Patent Consultants
  • Software Developers
  • IT Heads
  • Technology Firms
  • Other Related/Interested Professionals or Organizations

Software Patents; Heightened Standard

Neil C. Maskeri, Attorney
Volpe and Koenig, P.C.
  • Recent developments including the May 2016 Subject Matter Eligibility update from the USPTO, Enfish, TLI, and Bascom
  • Background analysis of 101 and Post-Alice eligibility analysis
  • How to draft a Detailed Description to avoid post-Alice issues
  • Using figures strategically to avoid post-Alice issues

Nathan F. Phares, Attorney
Harrity & Harrity, LLP
  • How did Alice change the best practices for drafting software patents?
  • How have favorable post-Alice decisions changed the approach to drafting specifications and claims?
  • How can you get the information you need from inventors to draft a quality patent application?

Sucheta Chitgopekar, Attorney
Meredith Keyhani, PLLC
  • Responding to Office Actions after Alice
  • Best Practices
  • Analysis of software inventions that survived Alice
  • Hardware as a new backdoor for software inventions

Software Patents; Heightened Standard

Software Patents; Heightened Standard

Neil C. MaskeriAttorneyVolpe and Koenig, P.C.

Neil’s practice focuses on preparing and prosecuting domestic and foreign patents and includes counseling clients to develop customized global IP strategies.  Neil has significant standards related experience in 3GPP LTE and IEEE 802 wireless technologies, including drafting and prosecuting patents related to architectural design and MAC/PHY signaling.  In addition, Neil prosecutes various medical devices and neutraceutical patents involving combinations of pharmaceutical and herbal compounds.  Neil also has experience in performing infringement analyses for imaging system technologies.

Prior to practicing law, Neil gained nearly ten years of research and industrial experience working for companies ranging from Fortune 100 pharmaceutical to start-up biotechnology companies.  With his extensive research experience in bioprocess engineering and biopharmaceutical formulations, Neil better meets a variety of clients’ needs.  Neil also obtained substantial research experience in neuroscience and pulmonary medicine and published several papers in highly regarded scientific journals.

Software Patents; Heightened Standard

Nathan F. PharesAttorneyHarrity & Harrity, LLP

Nathan Phares is a patent attorney specializing in patent preparation and prosecution before the United States Patent and Trademark Office.  Nathan has represented various clients in a wide range of technical fields, including computer networking, computer hardware and software systems, network design and security, Internet-related systems, wireless communication systems, optical communication and devices, and business methods.  Nathan has extensive software patent drafting experience, and has drafted dozens of software-related patents in the post-Alice era.  Nathan is a graduate of the University of Kentucky College of Law, where he was a staff editor of the Kentucky Law Journal.  Prior to attending law school, Nathan attended Purdue University. 

Software Patents; Heightened Standard

Sucheta ChitgopekarAttorneyMeredith Keyhani, PLLC

Sucheta Chitgopekar, Esq. is an attorney with the law firm of Meredith & Keyhani, PLLC. Prior to working with this firm, Ms. Chitgopekar worked with a number of law firms in Chicago and Texas on various intellectual property matters and worked as a software engineer at Motorola.

Ms. Sucheta has invaluable experience in prosecuting patent applications before the United States Patent and Trademark Office (USPTO), in the field of telecommunications, database applications, computer hardware, software, social networking, and business method patents.

Ms. Sucheta is admitted to practice before the United States Patent and Trademark Office, and Illinois State Bar. Ms. Sucheta is also admitted to practice law in India.


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Software Patents; Heightened Standard

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   NONE

Course Code:
   145490

NASBA Field of Study:
   Specialized Knowledge and Applications

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Founded in 1987, Volpe and Koenig, P.C. is a full service intellectual property law firm headquartered in Philadelphia, Pennsylvania, and Princeton, New Jersey.  Volpe and Koenig provides worldwide client counseling on patents, trademarks, copyrights, trade secrets, technology transfers, due diligence, licensing and enforcement of intellectual property rights. With more than 50 attorneys, patent agents, and technical advisors on the firm’s U.S. team and a global network of associated experts, Volpe and Koenig serves a diverse roster of U.S. and multinational clients across a wide range of industries. For additional information, please visit www.vklaw.com.

Website: https://vklaw.com/

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.

Website: https://www.harrityllp.com/

Meredith & Keyhani, PLLC, founded in 2003, is a sophisticated intellectual property boutique law firm unusual among firms of its size with a vision of providing the highest quality of intellectual property legal services in U.S. law to clients around the globe. Meredith & Keyhani, PLLC takes special pride in its ability to provide personalized attention to the needs of its clients at competitive costs.

Website: https://meredithkeyhani.com/

Neil’s practice focuses on preparing and prosecuting domestic and foreign patents and includes counseling clients to develop customized global IP strategies.  Neil has significant standards related experience in 3GPP LTE and IEEE 802 wireless technologies, including drafting and prosecuting patents related to architectural design and MAC/PHY signaling.  In addition, Neil prosecutes various medical devices and neutraceutical patents involving combinations of pharmaceutical and herbal compounds.  Neil also has experience in performing infringement analyses for imaging system technologies.

Prior to practicing law, Neil gained nearly ten years of research and industrial experience working for companies ranging from Fortune 100 pharmaceutical to start-up biotechnology companies.  With his extensive research experience in bioprocess engineering and biopharmaceutical formulations, Neil better meets a variety of clients’ needs.  Neil also obtained substantial research experience in neuroscience and pulmonary medicine and published several papers in highly regarded scientific journals.

Nathan Phares is a patent attorney specializing in patent preparation and prosecution before the United States Patent and Trademark Office.  Nathan has represented various clients in a wide range of technical fields, including computer networking, computer hardware and software systems, network design and security, Internet-related systems, wireless communication systems, optical communication and devices, and business methods.  Nathan has extensive software patent drafting experience, and has drafted dozens of software-related patents in the post-Alice era.  Nathan is a graduate of the University of Kentucky College of Law, where he was a staff editor of the Kentucky Law Journal.  Prior to attending law school, Nathan attended Purdue University. 

Sucheta Chitgopekar, Esq. is an attorney with the law firm of Meredith & Keyhani, PLLC. Prior to working with this firm, Ms. Chitgopekar worked with a number of law firms in Chicago and Texas on various intellectual property matters and worked as a software engineer at Motorola.

Ms. Sucheta has invaluable experience in prosecuting patent applications before the United States Patent and Trademark Office (USPTO), in the field of telecommunications, database applications, computer hardware, software, social networking, and business method patents.

Ms. Sucheta is admitted to practice before the United States Patent and Trademark Office, and Illinois State Bar. Ms. Sucheta is also admitted to practice law in India.

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