USPTO’s Subject Matter Eligibility: An Update
On July 30, 2015, the United States Patent and Trademark Office (USPTO) has issued additional guidelines in determining Subject Matter Eligibility under 35 U.S.C. § 101. These guidelines conform to the public comments provided in response to the Interim Patent Eligibility Guidance released by the USPTO in December 2014. The various themes of the comments include requests for additional examples of claims directed to abstract ideas and laws of nature; explanation of the markedly different characteristics (MDC) analysis; and clarification of the requirements of a prima facie case of unpatentability under § 101 and the role of evidence in subject matter rejections.
The newest updates focus on analysis of abstract ideas, particularly in the business method, Graphical User Interface, and software areas. It also provides additional examples of subject matter eligible claims in various technologies as well as sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim is subject matter eligible. These examples are deem equally valuable to USPTO examiners and applicants by giving both parties cleaner roadmap on the proper analysis for determining patent eligible subject matter.
Both the December 2014 Interim Guidance and the July 2015 Update have shown USPTO’s extended efforts to develop and implement policy regarding the judicially recognized patent ineligible exceptions. The significant changes in how the office examines patent applications since the Supreme Court’s decisions in Alice Corp v. CLS Bank and Mayo v. Prometheus serve as the turning points in the conventional wisdom of subject matter eligibility.
Unfortunately, the July 2015 Guidance was viewed with obscurity concerning the requirements for establishing a sufficient prima facie case of subject matter ineligibility. It appears to indicate that an examiner can take official notice as to whether additional elements in the claim amount to significantly more than the judicial exception by noting that “a rejection should only be made if an examiner relying on his or her expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more.”
In this two-hour LIVE Webcast, the Knowledge Group has assembled a panel of key thought leaders and practitioners to help examine the USPTO's July 2015 Interim Guidance. The panel will also highlight the implications of the Guidance on patent eligibility and will provide practical advice and best strategies for drafting claims and writing applications under this latest Guidance.
Some of the major topics that will be covered in this course are:
- Subject Matter Eligibility: An Overview
- 2014 Interim Patent Eligibility Guidance
- July 2015 New Guidance: Practical Implications and Best Practices
- Prima Facie Case
- Recent Decisions
- Alice Corp v. CLS Bank
- Mayo v. Prometheus
- Patent Eligibility: Best Practices for Handling Uncertainties
- Possible Outcomes and Changes
Robert R. Sachs, Partner
Fenwick & West LLP
- There has been a dramatic and sustained increase in the rate of Section 101 invalidations after Alice, particularly through early dispositive motions.
- In the USPTO, Section 101 rejections likewise increased dramatically in the software, biotech, and especially business method technology areas.
- The patent examiners in the business method art units appear reject applications at much higher rates than examiners in other areas, even for the same types of technologies.
- Prosecution strategies should focus less on attempting to convince the examiner that there is no abstract idea, and more on the claim limitations that provide improvements to the technology.
Michael D. Van Loy, PhD , Member
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
- The USPTO's examination guidelines for subject matter eligibility remain a work in progress.
- While the July 2015 Update is not the last word, it seems closer to what the eventual status quo might resemble
- Certain areas of subject matter have become no fly zones and are unlikely to become patent eligible in the foreseeable future
- In other subject matter areas, the USPTO has filled the gaps in the judicial precedent landscape by offering pathways to eligibility that (for now) appear promising for applicants
SEGMENT 3: Maria Luisa Palmese, Partner
Kenyon & Kenyon LLP
- Impact of 35 U.S.C. § 101 on Life Sciences Inventions
- Diagnostic Methods - Ariosa Diagnostics, Inc. v. Sequenom, Inc.
- PTO Interim Guidance As It Relates to Life Science Inventions
- Advice on Overcoming Section 101 Rejections in Life Science Inventions
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- In-house Counsel
- General Counsel
- Other Related and Interested Professionals
Mike is a Member of Mintz Levin’s Intellectual Property Section, focusing on all aspects of IP portfolio strategy development including drafting and prosecution of patent and trademark applications; preparation of patentability, infringement, and validity opinions; litigation preparation and support; licensing negotiations; and other monetization approaches. Mike works in a wide range of technical fields, including motor vehicle engines and braking systems, chemical and environmental sensing and analysis, alternative energy sources and storage, emissions controls and remediation technologies for air and water, and semiconductor design and production, among others. Before joining Mintz Levin, Mike was a patent agent at a national intellectual property law firm in Silicon Valley and at a Palo Alto incubator venture fund.
Mike is a Member of Mintz Levin’s Intellectual Property Section, focusing on all aspects of IP portfolio strategy development including …
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals.
He is the primary evaluator for standards essential patents on today's most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada.
One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect. Follow Bob’s commentary on patent eligibility and related patent issues on Bilski Blog.
Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing …
Maria Luisa Palmese has over 20 years’ experience representing clients in patent litigation, patent prosecution, and trademark and design protection matters. She maintains a global practice focused on assisting companies with their U.S. IP matters. Her focus is to efficiently and effectively create and maximize value through IP.
A skilled litigator, Ms. Palmese has represented her clients in both jury and bench trials in some of the busiest patent jurisdictions in the United States, including the Southern District of New York, the District of New Jersey, Northern District of Illinois, and the District of Delaware. She is adept at litigating complex intellectual property disputes across a range of subject matter, including chemicals, and chemical processes, pharmaceuticals, vaccines, cosmetics, polymers and other materials.
Ms. Palmese also maintains a counseling, patent prosecution, opinion and due diligence practice. In this capacity she counsels small- and medium-sized businesses in a variety of industries, including the chemical, pharmaceutical, food, cosmetics, and agricultural industries, as well as the design, fashion and entertainment industries.
Ms. Palmese is bilingual in Italian, and fluent in French and Spanish. She also has an elementary knowledge of German and Russian.
Maria Luisa Palmese has over 20 years’ experience representing clients in patent litigation, patent prosecution, and trademark and design protection …
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Method of Presentation:
NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Areas of Professional Practice
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About Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz Levin is a full-service, general practice law firm with over 500 attorneys, and eight offices throughout the US and the UK. Major practice areas include Antitrust, Bankruptcy, Corporate & Securities, Employment, Environmental Law, Health Law, Intellectual Property, Litigation, Public Finance, Real Estate, and Tax. Mintz Levin’s Intellectual Property practice includes a global team of over 110 prosecution, counseling, and litigation attorneys, technology specialists, and patent agents that routinely handle complex patent litigation cases and prosecute hundreds of patents per year. The firm serves clients of all sizes and at all stages of growth, representing Fortune 500 companies, entrepreneurs, emerging growth companies, government agencies, and nonprofits. The firm also encourages pro bono service, dedicating a certain percentage of its billable hours to pro bono matters.
About Fenwick & West LLP
Fenwick & West provides comprehensive legal services to ground-breaking technology and life sciences companies at every stage of their lifecycle. We craft innovative, cost-effective and practical solutions for established and emerging companies on issues ranging from venture capital, public offerings, M&A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world's most recognized companies become and remain market leaders. For information, visit www.fenwick.com.
About Kenyon & Kenyon LLP
Kenyon & Kenyon LLP partners with their clients to provide a full range of intellectual property services. They represent clients in a broad range of industries and technologies, including automotive, chemicals, computer hardware and software, financial services, food and beverage, interactive entertainment, life sciences, mechanical, media and sports, pharmaceuticals, retail, universities and research institutions, and venture capital. From Kenyon’s offices in New York, Washington and Palo Alto, they serve clients in a cost-effective and efficient manner across the globe in such areas as federal court litigations; U.S. Patent Office post grant proceedings; trademark oppositions and cancellations; International Trade Commission proceedings; patent prosecution, counseling and portfolio management; trademark prosecution, counseling and portfolio management; trademark clearance; copyright counseling and licensing; trade secrets and unfair competition; brand and technology licensing and development agreements; and social media counseling. Kenyon’s IP practice has received widespread recognition, having been named a Top IP Firm by such publications as Chambers USA, Legal 500, IAM 1000 – The World’s Leading Patent Practitioners, Managing Intellectual Property and World Trademark Review.