Subject Matter Eligibility for Mechanical Patents: Implications of American Axle, Abstractness, and Laws of Nature

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Wednesday, December 7, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on subject matter eligibility for mechanical patents. The panel will discuss the American Axle decision and its implications for mechanical patents. The decision(s) in American Axle brought the issues of abstractness and laws of nature to practitioners in the mechanical arts. The panel will offer best practices for applying recent court guidance in application drafting and prosecution.
Faculty

Mr. Christensen’s IP practice focuses on assisting clients in protecting their inventions in both U.S. and foreign patent offices in a variety of technical fields, including optics, additive manufacturing, aerospace systems, consumer and industrial products, and renewable energy systems. He also has significant experience in assisting clients in developing cost effective strategies for managing risk in their developing of new products, and the building and managing their IP. Mr. Christensen further counsels startup to medium-sized clients in preparing their portfolios for investment financing and associated due diligence activities. He is active in thought leadership, especially related to how technology is changing both manufacturing and legal business operations and regularly presents at webinars and authors articles on a variety of law practice management and IP topics.

Mr. Bahr specializes in all areas of patent practice. He previously served as the Deputy Commissioner for Patent Examination Policy at the USPTO. During his distinguished career at the USPTO, he was involved in nearly all patent-related rulemaking since 1995. His involvement in patent rulemaking includes the changes to implement the American Inventors Protection Act of 1999 and the Leahy-Smith America Invents Act. He provided administrative oversight and direction for the activities of the Office of Petitions, Office of Patent Legal Administration, Office of Patent Quality Assurance, Central Reexamination Unit, and Manual of Patent Examining Procedure staff during his tenure at the USPTO.

Mr. Watts is responsible for planning and implementing Ranking Member Thom Tillis and the Republican minority’s legislative portfolio on all aspects of intellectual property law. He previously served as Majority Chief Counsel and Staff Director for the Senate Judiciary Committee Subcommittee on Intellectual Property in the 116th Congress under then Chairman Thom Tillis. As Majority Chief Counsel, Mr. Watts was responsible for planning and implementing then Chairman Tillis’ legislative and oversight agenda on all aspects of America’s innovation economy. During his tenure as Majority Chief Counsel, the Subcommittee held over seventeen legislative and oversight hearings and multiple staff briefings on intellectual property issues ranging from the state of patent eligibility law in America to reforming the Digital Millennium Copyright Act of 1998. Under Mr. Watts' leadership, the Subcommittee passed the CASE Act, the Trademark Modernization Act, and the Protecting Lawful Streaming Act, three landmark bills that collectively represent the largest changes to intellectual property law since the Leahy-Smith America Invents Act.  Prior to his appointment as the Subcommittee’s Majority Chief Counsel, he had served as Chief Counsel in Senator Thom Tillis’ (R-N.C.) personal office. Earlier in Mr. Watts' career he spent two years serving as Chief Immigration Counsel to then Senate Judiciary Committee Chairman Chuck Grassley (R-IA). He began his career with then Senator Jeff Sessions as a Legislative Counsel on the Subcommittee on Immigration and the National Interest, handling civil rights and civil liberties law, general tort law, bankruptcy, telecommunications, and intellectual property issues for the Senator.
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Description
Earlier this year, the Supreme Court denied certiorari in American Axle & Mfg. v. Neapco Holdings L.L.C., a mechanical patent case that many thought provided an opportunity for clarity on the issue of subject matter eligibility. Subject matter eligibility has been an issue for biotech and software practitioners for years. With this decision, mechanical patent applicants face this challenge too.
Under Section 101, an invention must be a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" to be patent eligible. Inventions cannot be abstract ideas or laws of nature as they do not meet the Section 101 requirements. They must fall within one of the following categories: process, machine, manufacture, or composition of matter.
When patenting mechanical inventions that utilize a law of nature, it is critical that the claims and the specification allow the application to overcome potential Section 101 issues. Claims should include specific mechanisms, physical structures, or steps that make use of a law of nature to demonstrate it is more than "simply stat[ing] a law of nature while adding the words 'apply it'" as the Federal Circuit stated.
Listen as our panel examines the American Axle decision and its implications for mechanical patents. The panel will provide guidance to practitioners on subject matter eligibility, particularly in view of the Supreme Court denying cert in American Axle. The decision(s) in American Axle brought the issues of abstractness and laws of nature to practitioners in the mechanical arts. The panel will offer best practices for applying recent court guidance in application drafting and prosecution.
Outline
- American Axle and other recent decisions
- Implications for mechanical patents
- Abstractness
- Laws of nature
- Best practices for application drafting and prosecution for mechanical inventions
Benefits
The panel will review these and other key questions:
- What are the eligibility challenges for mechanical patent applications?
- How does the Supreme Court's decision change the playing field for 101 eligibility for mechanical patents?
- What are best practices for drafting and prosecuting mechanical patent applications?
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