Lessons Learned Ten Years After Alice v. CLS: How to Navigate Section 101
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Tuesday, July 23, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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This CLE webinar will guide patent counsel on navigating Section 101 ten years after the Supreme Court's decision in Alice Corp v. CLS Bank. The panel will examine the key decisions that define the subtests that the Federal Circuit has defined that go beyond the two Alice Mayo safe harbors. The panel will offer best practices for demonstrating patent eligibility.
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.
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.
It has been ten years since the Supreme Court decided Alice Corp v. CLS Bank, which completely reshaped the patent-eligibility landscape for software and business method patents. Since Alice, the Federal Circuit has rendered numerous decisions affecting this subject matter, raising many challenges, including how to determine whether a claim recites an abstract idea at Alice’s step one and how to determine whether a claim recites an inventive concept at Alice’s step two.
The Supreme Court in April 2024 dismissed a petition asking the Court to revisit and clarify its seminal holding in Alice, thus signaling that the Supreme Court may not provide guidance anytime soon. This raises the importance of the many Federal Circuit decisions issued since Alice. For example, the Federal Circuit has clarified how both the patent specification and prior art are utilized in a 101 analysis. The Federal Circuit has also basically settled on a "technological improvement" test for determining patent-eligible subject matter, and the Federal Circuit has made it harder to patent AI inventions.
In response to Alice and the Federal Circuit’s many decisions, the USPTO promulgated guidelines to facilitate 101 analyses during examination. Patent counsel needs to pay attention to the patent-eligibility lessons and guidance from the Federal Circuit, the PTAB, and the USPTO.
Listen as our authoritative panel of patent attorneys discusses the key decisions since Alice and offers best practices.
- Brief review of Alice Corp. v. CLS Bank (U.S. 2014)
- Key Federal Circuit court decisions
- PTAB decisions
- USPTO guidelines
- Best practices
The panel will review these and other key issues:
- How is the Federal Circuit applying the framework for patent eligibility created in Alice?
- What pitfalls should counsel keep in mind to minimize the risk of invalidity?
- What are best practices for patent counsel to demonstrate patent eligibility in litigation as well as at the USPTO?
- What are best practices for drafting patent applications and claims to satisfy Section 101?
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