Subject Matter Eligibility: Navigating Expanding Instability in Sect. 101 Inquiry
Applying USPTO and Court Guidance in Drafting and Prosecuting Patent Applications
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, April 11, 2023
- 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 course will guide patent counsel on recent court decisions addressing Section 101 subject matter eligibility. The panel will discuss the USPTO Revised Patent Subject Matter Eligibility Guidance. The panel will address treatment at the examiner stage and how it fits with the current court treatment. The panel will provide best practices for applying the USPTO guidelines and court guidance in application drafting and prosecution.
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.
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.
The Federal Circuit Court of Appeal arguably extended the scope of patent-ineligible subject matter in its recent decision in Yu v. Apple (Fed. Cir. June 11, 2021). On appeal, the Federal Circuit rendered patent-ineligible a specialized camera claimed in the patent in question.
The split panel found that Claim One was directed to an abstract idea and merely invokes well-known processes and machinery. The court rejected Yu's assertion that the claims are directed to patent-eligible applications of the abstract idea.
Judge Newman disagreed, finding the majority were fundamentally wrong in considering the novelty of the device in its Section 101 analysis. Judge Newman's dissent stated, "[t]he case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness."
Listen as our authoritative panel of IP attorneys examines the recent decisions addressing Section 101 subject matter eligibility as well as the dissents. The panel will also discuss the USPTO Revised Patent Subject Matter Eligibility Guidance. The panel will address the seeming clarity at the examiner stage and the uncertainty in the Federal Circuit. The panel will provide best practices for applying the USPTO guidelines and court guidance in application drafting and prosecution.
- Yu v. Apple and other recent decisions
- USPTO guidance
- Expanded scope of ineligible subject matter
- Best practices for application drafting and prosecution
The panel will review these and other key questions:
- How does the Federal Circuit's recent decision change the playing field for 101 eligibility?
- How have examiners applied the revised subject matter eligibility guidance? How does the application fit with the court's treatment?
- What are best practices for drafting and prosecuting involved applications?
Related Courses
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Tuesday, December 9, 2025
1:00 p.m. ET./10:00 a.m. PT