Navigating the Wide Chasm Between the Federal Circuit and the USPTO on Patentable Subject Matter Under Section 101

This CLE webinar will guide patent counsel on navigating patentable subject matter at the Federal Circuit and the USPTO for patents on artificial intelligence and business methods, and understanding the different positions the two have regarding patent eligibility.

There is a wide chasm between the patent eligibility views of the Federal Circuit and the USPTO. So, a patent practitioner could successfully navigate all the traps at the USPTO to obtain a patent on artificial intelligence or a business method only to watch it readily struck down by the Federal Circuit for failing to recite patent-eligible subject matter after years of costly litigation. Practitioners therefore need to understand the differences between the Federal Circuit and the USPTO on patent eligibility. 

With the new Director came a new direction for patentable subject matter: expansiveness. In his statement to the U.S. Senate Subcommittee on Intellectual Property Committee on the Judiciary, he criticized the existing patent-eligibility difficulties facing artificial intelligence and business methods, stating "[t]hat is not what the [Supreme Court] intended, and it is certainly not what Congress ever authorized." He then addressed Ex parte Desjardins (PTAB precedential), where he found that claims directed to training a machine learning model were patent eligible, citing the Federal Circuit's Enfish and McRO decisions for support. But how would these claims fare against the Federal Circuit's Electric Power Group line of cases, which is the Federal Circuit's weapon of choice for striking down claims directed to mere data analysis/manipulation? He also did not address how an expansive approach to business methods could be reconciled with the Federal Circuit's jurisprudence given that the Federal Circuit has not found one business method patent has satisfied Section 101 since the Supreme Court's Alice decision.  

This situation raises many questions. For example, would the Desjardins claims survive scrutiny by the Federal Circuit? And, under what circumstances would a business method survive scrutiny by the Federal Circuit? 

Listen as our authoritative panel of patent attorneys examines the relevant court guidance and USPTO guidance on artificial intelligence and business methods. The panel will offer best practices for navigating the divide between the court and the USPTO guidance.