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  • schedule 90 minutes

Advanced Patent Sect. 101 Eligibility: Latest Federal Circuit Decisions, PTAB Cases, and USPTO Guidelines

$347.00

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Description

The Federal Circuit has included some surprises when developing its Section 101 jurisprudence after the Supreme Court's 2014 Alice decision. For example, before that decision, it would have been almost unimaginable for a mechanical invention to fail to satisfy Section 101. However, the Federal Circuit in Yu v. Apple Inc., et al. (Fed. Cir. 2021) did exactly that by using Section 101 to strike down a mechanical invention. Also, the Federal Circuit in Universal Secure Registry LLC, v. Apple Inc., et al. (Fed. Cir. 2021) used unexpected results—a concept related to a Section 103 secondary consideration analysis—as part of a Section 101 inquiry.

In 2019, the USPTO announced revised guidance for subject matter eligibility under Section 101. These guidelines revise the procedures for determining whether a patent claim is directed to a judicial exception. But, in Cleveland Clinic Foundation et al. v. True Health Diagnostics L.L.C. (Fed. Cir. 2019), the Federal Circuit held that just because a patent satisfies the USPTO's guidelines during prosecution does not mean that the Federal Circuit won't strike it down. In Cleveland Clinic, the Federal Circuit ignored and, in fact, criticized the USPTO's guidelines.

These decisions, among others, serve as a reminder that patent owners must not only consider USPTO guidance when drafting patent applications, they should also keep in mind that case law supersedes agency guidance. And patent applications should satisfy both Federal Circuit case law and agency guidance.

Listen as our authoritative panel of patent attorneys examines recent Federal Circuit decisions and the 2019 revised guidelines. The panel will discuss the importance of satisfying both USPTO guidance on Section 101 and Federal Circuit Section 101 case law. The panel will offer their perspectives on handling both to get an invention patented.

Presented By

Michael L. Kiklis
Founder
Kiklis Law Firm, PLLC

Mr. Kiklis leverages his 30 years of experience to represent clients in his areas of focus: trials at the PTAB and patent litigation. He has been involved in 100 PTAB trials. He also handles appeals to the Federal Circuit from his cases, having now been involved in over 20 appeals. He both enforces and defends the intellectual property rights of his clients and is often called upon to handle cases worth more than $100 million. Mr. Kiklis brings an in-depth understanding of the business and IP needs of his technology clients, which he developed from years of experience in virtually every kind of patent matter, from cross-licensing and due diligence to bet-the-company PTAB trials and patent litigation. He has an extensive background in computer science based on his six years of experience as a software developer at some of the computer industry’s leading companies. Mr. Kiklis provides significant and influential thought leadership as a frequent speaker and author on patent law, including patentable subject matter and PTAB trials. He is also the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence.

Stephen G. Kunin
Partner
Maier & Maier, PLLC

Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also serves as an expert witness and consultant on patent policy, practice and procedure. During his tenure at the USPTO, he served in many executive positions, including as Deputy Commissioner for Patent Examination Policy.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, November 21, 2023

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Recent Federal Circuit decisions
  2. Recent PTAB cases
  3. Latest USPTO guidelines
  4. The interplay between the Federal Circuit and USPTO
  5. Practical guidance for handling both Federal Circuit decisions and USPTO guidance

The panel will review these and other priority issues:

  • How do recent decisions from the Federal Circuit impact the drafting of patents?
  • What is the interplay between Federal Circuit decisions and the USPTO revised guidance?
  • How is prior art used in a Section 101 analysis?
  • How is the patent specification used in a Section 101 analysis?
  • What are best practices for patent counsel to demonstrate patent eligibility?