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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Wednesday, October 1, 2025

  • schedule Time

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

  • timer Program Length

    90 minutes

Credit Information

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


  • Live Online


    On Demand

$347.00

This course is $0 with these passes:

CLE
ALL

This CLE webinar will guide patent counsel on the issue of abstract ideas and patent eligibility. The panel will discuss guidance provided by both the courts and the USPTO. The panel will offer best practices for drafting software patent applications to minimize the risk of a § 101 challenge and for defending software patents from § 101 challenges.

Faculty

Robert W. Bahr
Partner
Maier & Maier, PLLC

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.

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Michael L. Kiklis
Founder
Kiklis Law Firm, PLLC

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit appeals from his cases. With an extensive background in computer science, his technological focus is on software patent matters. Mr. Kiklis frequently handles high stakes matters, having been involved in several cases in which over $1 billion was at stake.

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Description

The Supreme Court's Alice Corp. v. CLS Bank Int’l decision in 2014 provided a two-part test to determine patentable subject matter under 35 U.S.C. § 101. First, the court determines whether the claim is directed to an abstract idea. Unfortunately, the Supreme Court did not provide much, if any, guidance on how such a determination is made other than to say:

[W]e need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept … at issue here.

Second, if the claim is directed to an abstract idea, the court examines the claim to determine whether "it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible invention." The Supreme Court held that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." As a result, if a claim is directed to an abstract idea, it is very close to being found ineligible and cannot be saved by mere generic computer recitations, which poses a problem for many software patents. Therefore, it is critical for patent counsel to understand what is an abstract idea and how is it determined.

The Federal Circuit has provided significant guidance on Alice's step one. For example, in Enfish L.L.C. v. Microsoft Corp. (Fed. Cir. 2016), the court found that a claim was not directed to an abstract idea because the "focus of the claims is on the specific asserted improvement in computer capabilities… ." And, most recently, in PowerBlock Holdings Inc. v. iFit Inc. (Fed. Cir. Aug. 11, 2025), the court held that it is improper to consider whether claim limitations are old, new, or obvious as part of the Alice step-one analysis.

Listen as our panel of experienced patent attorneys examines the issue of abstractness and patent eligibility. The panel will offer best practices for applying recent court and USPTO guidance both to assist counsel with defending software patents from § 101 challenges and to draft software patent applications to minimize the risk of a § 101 challenge.

Outline

I. What guidance has the Supreme Court provided on abstract ideas?

II. What subject matter has the Federal Circuit found to be abstract?

III. How does the Federal Circuit perform the abstract idea analysis?

IV. What subject matter has the USPTO found to be abstract?

V. How does the USPTO perform the abstract idea analysis?

VI. Best practices

Benefits

The panel will review these and other important issues:

  • How are the courts applying the framework for patent eligibility?
  • What guidance can be gleaned from the Federal Circuit's decisions?
  • What are best practices for patent counsel to avoid patent eligibility issues?