USPTO’s Subject Matter Eligibility: The Dos and Don’ts in 2017 and Beyond
Last year, the United States Patent and Trademark Office (USPTO) released its long-awaited guidance in formulating rejections under 35 U.S.C. § 101, subject matter eligibility. The USPTO highlighted that for a nature-based product to be patentable under § 101, the claimed product must be different in structure, form, functions and activity when compared to the naturally occurring counterpart.
In this LIVE Webcast, a panel of thought leaders and professionals assembled by The Knowledge Group will provide the audience with an in-depth analysis of the fundamentals as well as recent developments in USPTO’s Subject Matter Eligibility. Speakers from different industries will present all the important issues, dos and don’ts and legal insights with regard to this significant topic.
Key topics include:
- USPTO’s Subject Matter Eligibility – An Overview
- Risks and Challenges
- Reporting Requirements
- Practical Tips and Strategies
- What Lies Ahead in 2017?
Michael Bergman, Founding Partner
Bergman & Song LLP
- a survey of Alice and post Alice cases including:
- McRO; and
- an overview of Patent Office responses to these cases; and
- a few suggestions for effective drafting and prosecuting in these uncertain times.
Stephen J. Shaw, Senior Associate
- Patent office guidance.
- Examples of how to use the guidelines to address patent office rejections
- Strategies with examiners
Laura W. Smalley, Partner
Harris Beach PLLC
- Updates on Caselaw – Federal Circuit and District Court decisions applying Mayo and Myriad
- Should you file for a patent in biotechnology and the life sciences?
- Federal Register – 2014 Interim Guidance on Patent Subject Matter Eligibility
- Law of Nature
- Additional Guidance and Examples from the USPTO on patent eligible subject matter
- Drafting claims that are eligible because they are not directed to a law of nature or natural phenomenon
Jeffrey C. Wu, J.D., Ph.D., Attorney
Knobbe, Martens, Olson & Bear, LLP
Brenden S. Gingrich, Partner
Knobbe, Martens, Olson & Bear, LLP
- Federal Register – 2014 Interim Guidance on Patent Subject Matter Eligibility
- Nature-Based Products
- Additional Guidance and Examples from the USPTO on Patent Eligible Subject Matter
- Drafting claims to products that may include natural products or that may have diagnostic applications
- Eye On Future Litigation
- Factors to consider with regards to potential USPTO proceedings or potential trial court litigation
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- In-house Counsel
- General Counsel
- Other interested Professionals/Organizations
Michael Bergman is a founding partner of Bergman & Song LLP, where he guides clients through the complexities of securing and commercializing strategically targeted rights in patents, trademarks and other intellectual property. He combines an extensive technical and commercial background with patent experience in technologies ranging from micro and meso scale electronic and photonic devices through control systems, medical devices and chemical analysis equipment.
Mr. Bergman serves on the Board of Governors of the Boston Patent Law Association, and has chaired committees of the BPLA and the American Bar Association. He is a fellow of the American Bar Foundation, and an active member of the American Intellectual Property Law Association and of the Massachusetts Bar Association.
A Registered Patent Attorney, Mr. Bergman is admitted to practice in Massachusetts, New York, The District of Columbia, and before the Court of Appeals for the Federal Circuit.
Michael Bergman is a founding partner of Bergman & Song LLP, where he guides clients through the complexities of securing …
Laura W. Smalley is a partner at Harris Beach PLLC. Ms. Smalley practices in the Intellectual Property, Business and Commercial Litigation and Appellate Practice Groups. She is also a member of the firm’s e-discovery practice (e-infoSM) and serves on the Photonics Industry Team. Selected as one of the Best Lawyers in America, she focuses her legal practice on technology development and exploitation, including the enforcement of intellectual property rights. She also prosecutes patents in the chemical field. She is admitted to practice before the United States Patent and Trademark Office, with a technical background in chemistry, including organic and analytical chemistry. Ms. Smalley has litigated several patent infringement suits involving medical devices, electrical components and imaging technology. Laura also performs appellate work in both New York state and federal appellate courts.
Laura W. Smalley is a partner at Harris Beach PLLC. Ms. Smalley practices in the Intellectual Property, Business and Commercial …
Stephen Shaw is a Senior Associate with Hogan Lovells. Based out of San Francisco, Stephen has more than 15 years of experience in intellectual property law, representing clients ranging from established Fortune 50 corporations to emerging start-ups. Stephen advises clients regarding patent portfolio management, patent and trademark litigation, patent monetization, due diligence, and post-grant proceedings, including PTAB proceedings such as reexaminations, inter partes review, post grant review, and derivations. Prior to joining Hogan Lovells, Stephen worked as a partner at a firm that focused on intellectual property matters. Prior to that, Stephen handled all IP matters as an in-house attorney for Gracenote, worked as an in-house patent attorney for Qualcomm and Adobe, and practiced at a large South Carolina law firm, where he concentrated on patent and trademark litigation, as well as computer law issues and patent preparation and prosecution.
Stephen Shaw is a Senior Associate with Hogan Lovells. Based out of San Francisco, Stephen has more than 15 years …
Jeffrey C. Wu, Ph.D.’s practice is primarily focused on patent litigation, particularly in biotechnology, chemical, life sciences, pharmaceutical, and medical device litigation. Jeffrey also has significant experience in IP counseling and patent portfolio strategy.
Jeffrey has represented clients at all stages in the litigation process, including pre-litigation counseling, discovery, motion practice, trial, mediation and settlement. He has been involved in litigation involving Abbreviated New Drug Applications under the Hatch-Waxman Act as well as medical device and biotechnology litigation. He has meaningful experience with claim construction, discovery disputes, and managing expert witnesses.
Jeffrey is also actively involved in post-grant proceedings before the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office. He has successfully represented both Patent Owner and Petitioner in Inter Partes Review (IPR) and Ex Parte Reexamination proceedings.
Jeffrey C. Wu, Ph.D.’s practice is primarily focused on patent litigation, particularly in biotechnology, chemical, life sciences, pharmaceutical, and medical …
Brenden S. Gingrich’s practice focuses on the protection of intellectual property for the biotechnology and medical device industries. He focuses on the preparation and prosecution of patent applications, counseling on patent strategy, and intellectual property due diligence for both large and small businesses, as well as individual inventors.
Brenden currently represents clients with technology in the fields of antisense therapy, molecular biology and genetics, pharmaceuticals, DNA sequencing, blood purification, microfluid processing, and surgical fasteners.
During his doctoral studies, Brenden studied the molecular basis of complex social behavior in rodents. Prior to receiving his Ph.D., his undergraduate thesis focused on the study of artificial protein channels created using molecular biological techniques.
Brenden S. Gingrich’s practice focuses on the protection of intellectual property for the biotechnology and medical device industries. He focuses …
Print and review course materials
Method of Presentation:
NASBA Field of Study:
NY Category of CLE Credit:
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About Bergman & Song LLP
Bergman & Song LLP is a boutique Intellectual Property Law Firm located adjacent the Tufts University campus in suburban Boston, Massachusetts. The firm offers thoughtful and creative client counseling in patent and trademark prosecution, the preservation of trade secrets and facilitation of related commercial activities.
Clients of the firm include Fortune 500, midsize and small organizations as well as individual inventors. The firm’s attorneys bring broad technical and legal expertise to their patent office practice, and extensive business experience to address the strategic portfolio development needs of their clients.
About Harris Beach PLLC
Harris Beach is one of the oldest and largest law firms in New York state and among the country’s top law firms as ranked by The National Law Journal. The firm is a full service law firm that represents a wide range of clients, including Fortune 500 corporations, privately-held companies, public sector entities and not-for-profit organizations. Harris Beach is ranked by U.S. News and World Report as a Top Tier firm in every major area of law, and was named in 44 practice group categories in Best Lawyers in America.
Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, nationally and internationally. With over 27 practice groups and 17 industry teams, the firm provides the full depth and breadth of legal services. Principal industries represented include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.
About Hogan Lovells
Hogan Lovells offers extensive experience and insights gained from working in some of the world's most complex legal environments and markets for corporations, financial institutions, and governments. Hogan Lovells helps you identify and mitigate risk and make the most of opportunities. Hogan Lovells’ 2,500 lawyers on six continents provide practical legal solutions wherever your work takes you. Change is happening faster than ever, and to stay ahead, you need to anticipate what’s next. Legal challenges come from all directions. Hogan Lovells understands and works together with you to solve the toughest legal issues in major industries and commercial centers around the world. Whether you’re expanding into new markets, considering capital from new sources, or dealing with increasingly complex regulation or disputes, Hogan Lovells can help. Whether change brings opportunity, risk, or disruption, be ready by working with Hogan Lovells.
About Knobbe, Martens, Olson & Bear, LLP
Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe, Martens, Olson & Bear, LLP has over 300 lawyers and scientists nationwide and dedicates its practice to all aspects of intellectual property law, including litigation. Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages. The firm is headquartered in Orange County, California, with offices in San Diego, Silicon Valley, Los Angeles, San Francisco, Seattle and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.