About the Course
Introduction
The CLE course will provide an advanced discussion of patent eligibility, focusing in great detail on the latest Federal Circuit decisions, Patent Trial and Appeal Board (PTAB) cases, and U.S. Patent and Trademark Office (USPTO) guidance. The panel will offer best practices for navigating the interplay between the Federal Circuit and the USPTO when addressing patent eligibility issues.
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
For over 30 years, Mr. Kiklis has been called upon by industry-leading technology companies to handle some of their most important patent-dispute matters. He focuses his practice on trials at the USPTO’s Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, and patent litigation. Mr. Kiklis is often called upon to handle cases worth more than $100 million. He has handled 100 PTAB trials and over 20 appeals to the Federal Circuit. Mr. Kiklis 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 as well as his academic background, holding both a BS and MS in computer science. He is the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence and a co-author on PLI’s post grant treatise (1st edition). Mr. Kiklis is best known for his long history of writing and speaking on patentable subject matter under 35 U.S.C. § 101, including numerous articles and speeches at bar associations and professional organizations.
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.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Tuesday, November 21, 2023
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Recent Federal Circuit decisions
- Recent PTAB cases
- Latest USPTO guidelines
- The interplay between the Federal Circuit and USPTO
- 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?
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