HomeWebcastUSPTO’s New Patent-Eligible Subject Matter Guidance: What Patent Practitioners Can Do Now
Online CLE USPTO’s New CLE

USPTO’s New Patent-Eligible Subject Matter Guidance: What Patent Practitioners Can Do Now

Live Webcast Date: Wednesday, April 10, 2019 from 3:00 pm to 4:00 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE USPTO’s New

Join us for this Knowledge Group Online CLE USPTO’s New Webinar. In April 2018, the United States Patent and Trademark Office (USPTO) released its new guidance on patent-eligible subject matter based on the Federal Circuit’s decision on Berkheimer v. HP, Inc. The guidance specifically addressed "the limited question of whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity" and revised certain examination procedures in accordance with the recent jurisprudence.

While the decision does not change the basic criteria of subject matter eligibility set forth in MPEP § 2106, it does, however, reinforce the need for examiners to carefully analyze claims in determining patent-eligible subject matter. The revised procedures also leave a call for patent applicants to be more critical of upcoming updates.

In this Webcast, a panel of distinguished professionals and thought leaders will help patent owners, applicants and practitioners understand the important aspects of this significant topic. They will provide an in-depth discussion of the new USPTO guidance on patent-eligible subject matter in light of Berkheimer v. HP, Inc. Speakers will also offer significant insights on the implications of this decision on future patent applications.

Key topics include:

  • USPTO Issues Guidance on 35 U.S.C. 101
    • 2019 New Patent-Eligible Subject Matter Guidance
      • Revised Step 2A of the standard analysis with a new two-prong inquiry
      • For Abstract Ideas, identifies particular groupings (replaces previous “Quick Reference Sheet”)
      • What remains the same
  • Revised Examination Procedures
    • Revised Step 2A (two-prong inquiry)
      • For Abstract Ideas, identifies particular groupings (replaces previous “Quick Reference Sheet”)
      • New Examples published by PTO on Patent Eligibility
    • Revised Step 2B – Inventive Concept?
      • Evaluate whether the claims provides an inventive concept by adding “significantly more” to the judicial exception
      • Assertions of well-understood concepts must be supported by factual findings (Berkheimer)
      • Insignificant extra-solution activity evaluated at Step 2A must be reevaluated to determine whether it is well-understood
  • Impacts and Implications on upcoming Patent Applications
  • Tips for Patent Examiners and Applicants

Agenda

SEGMENT 1:
Dale Barr, Attorney
Constellation Law Group, PLLC
  • USPTO Issues Guidance on 35 U.S.C. 101
    • 2019 New Patent-Eligible Subject Matter Guidance  (January 2019)(so-called “2019 PEG”)
      • Revised Step 2A of the standard analysis with a new two-prong inquiry
      • Prong One:  For Abstract Ideas, identifies particular groupings (replaces previous “Quick Reference Sheet”)
        • three designated groupings of “abstract ideas” (mathematical concepts, certain methods of organizing human activity,
        • and mental processes)
        • sticking point #1: “certain methods of organizing human activity”
      • Prong Two:  Even if Abstract Idea, is it integrated into a practical application
        • sticking point #2: “practical application”
    • New USPTO Training and New USPTO Examples (New Examples 37-42)

SEGMENT 2:
John T. Lomenick, Attorney
Holland & Hart LLP
  • Berkheimer Background and Procedural Posture
  • Claims at issue in Berkheimer
  • Arguments
    • claims relate to an improve in computer functionality
    • admit that parsers and functions they performed existed years before
  • Holdings:
    • determination of whether claims cover only conventional activities requires factual determination
      • impossible to conclude claims are ineligible on summary judgment
  • USPTO Berkheimer Memo
    • A conclusion that an element or combination of elements represents well-understood, routine, conventional activity must be based upon factual determination that is supported
      • 1. A citation to an express statement in the specification or to a statement made by applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
      • 2. Citation to court decisions (3. Publication) as noting the well-understood, routing, conventional nature of the additional element(s).
      • 4. Official Notice, only when the examiner is certain, based upon personal knowledge, that the additional element(s) represent well-understood, routine, conventional activity.
  • Take-Aways

Who Should Attend

  • Patent Owners
  • Patent Applicants
  • Patent Examiners
  • Patent-related Practitioners
  • Patent Attorneys and Consultants
  • Patent Litigators
  • Private and Public Companies
  • Other Related and Interested Professionals

Preview Podcast

Please click the podcast below to hear the speakers discuss the key topics for this webcast.

Online CLE USPTO’s New

SEGMENT 1:
Dale Barr, Attorney
Constellation Law Group, PLLC
  • USPTO Issues Guidance on 35 U.S.C. 101
    • 2019 New Patent-Eligible Subject Matter Guidance  (January 2019)(so-called “2019 PEG”)
      • Revised Step 2A of the standard analysis with a new two-prong inquiry
      • Prong One:  For Abstract Ideas, identifies particular groupings (replaces previous “Quick Reference Sheet”)
        • three designated groupings of “abstract ideas” (mathematical concepts, certain methods of organizing human activity,
        • and mental processes)
        • sticking point #1: “certain methods of organizing human activity”
      • Prong Two:  Even if Abstract Idea, is it integrated into a practical application
        • sticking point #2: “practical application”
    • New USPTO Training and New USPTO Examples (New Examples 37-42)

SEGMENT 2:
John T. Lomenick, Attorney
Holland & Hart LLP
  • Berkheimer Background and Procedural Posture
  • Claims at issue in Berkheimer
  • Arguments
    • claims relate to an improve in computer functionality
    • admit that parsers and functions they performed existed years before
  • Holdings:
    • determination of whether claims cover only conventional activities requires factual determination
      • impossible to conclude claims are ineligible on summary judgment
  • USPTO Berkheimer Memo
    • A conclusion that an element or combination of elements represents well-understood, routine, conventional activity must be based upon factual determination that is supported
      • 1. A citation to an express statement in the specification or to a statement made by applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
      • 2. Citation to court decisions (3. Publication) as noting the well-understood, routing, conventional nature of the additional element(s).
      • 4. Official Notice, only when the examiner is certain, based upon personal knowledge, that the additional element(s) represent well-understood, routine, conventional activity.
  • Take-Aways

Online CLE USPTO’s New

Online CLE USPTO’s New

Dale BarrAttorneyConstellation Law Group, PLLC

Dale has been an intellectual property attorney for 22 years, and has extensive experience in the procurement of patents in the fields of computer-implemented inventions, aerospace technologies, electronics and semiconductor technologies, medical devices, and a variety of electro-mechanical systems.  Working closely with well-established and new-start companies, Dale communicates effectively to develop a thorough understanding of client business objectives, and works diligently to procure patents for clients that maximize both product protection and licensing potential.  In the event of conflicts, he also provides counseling and opinions to successfully resolve conflicts with competitors, infringers, or opposing parties.  Dale and his team of patent attorneys routinely handle issues involving patent subject matter eligibility.  Dale was elected to serve on the Board of Directors of the Washington State Patent Law Association from 2001 to 2009, including serving as President from 2007 to 2008.  He also has substantial experience in trademark and trade secret matters. 

Dale founded Constellation Law Group in 2008, and currently leads a team of attorneys who provide high quality patent and intellectual property related services.  Before starting Constellation Law Group, Dale practiced for ten years with law firms in Seattle, and also worked as an engineer in the aerospace industry for ten years before becoming an attorney.  He has previously served as a speaker or panelist on numerous occasions on various patent law topics.  He holds a BS in Aerospace Engineering from the University of Colorado, an MS in Aerospace Engineering from the University of Washington, and a JD from Seattle University.  Please feel free to contact Dale at (206)375-6383, or at dale@constellationlaw.com.

Online CLE USPTO’s New

John T. LomenickAttorneyHolland & Hart LLP

J.T. is a patent attorney who brings experience in patent preparation and prosecution in a variety of technical fields, such as telecommunications, wireless technology, data storage, trusted computing, cryptography, distributed ledger technology, blockchain, internet and cloud technologies, artificial intelligence, materials, construction technology, and consumer products.

J.T. also has experience in performing intellectual property portfolio due diligence, forming freedom to operate opinions, business entity formation, and trademark preparation and prosecution.

J.T. obtained his J.D. from the University of Denver – Sturm College of Law and has a B.S. in Computer Science and Engineering from the University of Mississippi.


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Online CLE USPTO’s New

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in patent laws

Course Code:
   147572

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credit:
    1.0 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.

Constellation Law Group is an intellectual property law firm based in the Seattle area.  We provide high quality patent and intellectual property related services at highly-affordable rates.  More specifically, we offer extensive experience in the procurement of patents in the fields of computer-implemented inventions, aerospace technologies, electronics and semiconductor technologies, medical devices, and a variety of electro-mechanical systems.  Several of our patent attorneys have advanced degrees in electrical engineering, aerospace engineering, computer science, and other technical disciplines, and some also have valuable industry experience in engineering, computer-related fields, as in-house counsel, and as patent examiners.  The attorneys of Constellation Law Group work diligently to obtain valuable patents for our clients that meet client needs for both product protection and licensing potential.  For more information, please contact us at (360)627-7147, or at admin@constellationlaw.com.

Website: http://www.constellationlaw.com

Our team of 40+ electrical engineering and computer-focused patent attorneys and other patent professionals counsel clients on strategic patent portfolio development, preparation, prosecution and opinion matters, and is adept at prosecuting large portfolios across a range of jurisdictions for clients with high volume, high value requirements.

Our patent practice primarily focuses on next-gen technologies covering electrical engineering, wireless communications, computer technologies, semiconductors, physics, mechanical engineering, circuits and optics, among others.

Our patent team is also contributing to patent thought leadership through their roles as Managing Editor, Lead Editors, and chapter authors of the first Patents and Standards: Practice, Policy, and Enforcement book (published through a joint partnership of BNA/AIPLA in Spring 2018).

Website: https://www.hollandhart.com

Dale has been an intellectual property attorney for 22 years, and has extensive experience in the procurement of patents in the fields of computer-implemented inventions, aerospace technologies, electronics and semiconductor technologies, medical devices, and a variety of electro-mechanical systems.  Working closely with well-established and new-start companies, Dale communicates effectively to develop a thorough understanding of client business objectives, and works diligently to procure patents for clients that maximize both product protection and licensing potential.  In the event of conflicts, he also provides counseling and opinions to successfully resolve conflicts with competitors, infringers, or opposing parties.  Dale and his team of patent attorneys routinely handle issues involving patent subject matter eligibility.  Dale was elected to serve on the Board of Directors of the Washington State Patent Law Association from 2001 to 2009, including serving as President from 2007 to 2008.  He also has substantial experience in trademark and trade secret matters. 

Dale founded Constellation Law Group in 2008, and currently leads a team of attorneys who provide high quality patent and intellectual property related services.  Before starting Constellation Law Group, Dale practiced for ten years with law firms in Seattle, and also worked as an engineer in the aerospace industry for ten years before becoming an attorney.  He has previously served as a speaker or panelist on numerous occasions on various patent law topics.  He holds a BS in Aerospace Engineering from the University of Colorado, an MS in Aerospace Engineering from the University of Washington, and a JD from Seattle University.  Please feel free to contact Dale at (206)375-6383, or at dale@constellationlaw.com.

J.T. is a patent attorney who brings experience in patent preparation and prosecution in a variety of technical fields, such as telecommunications, wireless technology, data storage, trusted computing, cryptography, distributed ledger technology, blockchain, internet and cloud technologies, artificial intelligence, materials, construction technology, and consumer products.

J.T. also has experience in performing intellectual property portfolio due diligence, forming freedom to operate opinions, business entity formation, and trademark preparation and prosecution.

J.T. obtained his J.D. from the University of Denver – Sturm College of Law and has a B.S. in Computer Science and Engineering from the University of Mississippi.

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