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Abstract Ideas and Patent Eligibility: Navigating Alice Step One and Surviving Section 101 Challenges

$347.00

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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.

Presented By

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, Mr. Bahr 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. Mr. Bahr 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 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.

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Credit Information

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


  • Live Online


    On Demand

Date + Time

  • event

    Wednesday, October 1, 2025

  • schedule

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

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

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?