The Revised USPTO Subject Matter Eligibility Guidance: What You Should Know
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
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”
- Treatment is significantly more
- New assay (sensor) is significantly more
- 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
- under January 2019 guidelines
James C. Signor, Member
Leydig, Voit & Mayer, Ltd.
- Evolution of Alice at the USPTO and Federal Circuit
- Shift in focus at USPTO from 101 to 112
- New categories of abstract ideas
- Practical tips for drafting applications and claims
- October 2019 update and what to expect going forward
Who Should Attend:
- Patent Attorneys and Consultants
- IP Attorneys & Consultants
- Patent Owners
- Patent Applicants
- Patent Examiners
- Patent/IP Managers and Officers
Eugene Molinelli's areas of expertise include signal and image processing (including nucleic acid sequencing data processing), medical imaging, sensors, transducers, semiconductor fabrication, applied physics, photonics, medical devices, oceanography, applied mathematics, computer networking and computer software, including neural networks and artificial intelligence. He earned his J.D. (with high honors) from George Mason University School of Law. Prior to becoming a patent attorney, Dr. Molinelli earned a Ph.D. in physical oceanography at Columbia University, participating in fieldwork to Antarctica and above the Arctic Circle. As an oceanographer, his work won several federal Small Business Innovation Research grants and contributed to his company's selection for Virginia's Technology Trailblazer Award. A Martindale-Hubbell Pre-eminent attorney in patent law, he is currently a member of the American Bar Association, American Intellectual Property Law Association, Licensing Executive Society, and Association of University Technology Managers.
Eugene Molinelli's areas of expertise include signal and image processing (including nucleic acid sequencing data processing), medical imaging, sensors, transducers, …
James Signor is a U.S. patent attorney based in the Frankfurt, Germany office of Leydig, Voit & Mayer. Mr. Signor primarily focuses his practice on serving European clients in all aspects of U.S. intellectual property law. He has over 10 years of experience in drafting and prosecuting patents in diverse technologies. In addition to his strong patent prosecution practice, he works closely supporting clients in making informed business decisions and in enforcing and commercializing their IP. This has involved drafting numerous opinions on patent validity, patentability and the freedom to operate, in addition to drafting petitions for reexamination and Inter Partes Review, assisting in patent infringement litigation, counseling with respect to litigation-related matters, performing due diligence and negotiating and drafting license and joint development agreements. Mr. Signor’s practice has a particular emphasis in the mechanical, electrical and computer fields.
James Signor is a U.S. patent attorney based in the Frankfurt, Germany office of Leydig, Voit & Mayer. Mr. Signor …
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Method of Presentation:
General knowledge of intellectual property laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Beusse Wolter Sanks & Maire PLLC
Beusse Wolter Sanks & Maire, PLLC ("BWSM") is a boutique intellectual property law firm with attorneys possessing the skills and attributes to both assess and protect intellectual property including trade secrets, copyrights, trademarks, patents, licenses and litigation support. BWSM has a worldwide reach with industry and research university clients, located throughout the world, whom the firm represents before governments and judicial bodies internationally. The firm patent attorneys are experienced in obtaining patents, both domestic and international, in a wide range of technologies including electrical, biotechnology and life sciences, business methods, chemical, computer hardware and software, e-commerce, materials, mechanical, and optics. For the third year in a row, BWSM is honored to receive the 2018 Law Firm 500 Award. This recognition is based on growth but could not be achieved without the continued, daily operational excellence and commitment to client service. See more at www.bwsmiplaw.com.
About Leydig, Voit & Mayer, Ltd.
Leydig, Voit & Mayer has a singular focus: intellectual property law. Leydig’s singular focus enables the firm’s attorneys to provide its clients with outstanding results. Through offices in Chicago, Boulder, San Francisco Bay Area, Alexandria and Frankfurt, Germany, and expertise spanning a wide range of industries, Leydig is able to tackle challenging and unique intellectual property issues for organizations and individuals across the U.S. and abroad. To provide the greatest value to clients, legal teams at Leydig are streamlined, creative, and focused on results and efficiency. Chambers USA described Leydig as “the quintessential, time-honored patent firm” and as “top-notch and cost-effective.” Leydig’s professionals are widely recognized as leaders in the intellectual property community and are dedicated to maintaining the outstanding results that keeps Leydig high on the list of top firms that advise the world’s largest corporations.