Manufacturing Patents and Patent Eligibility: Recent Court Treatment, USPTO Guidance, Alternatives for Protection

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Thursday, April 15, 2021

Recorded event now available

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Course Materials

This CLE course will provide guidance on patent eligibility for manufacturing patents. The panel will discuss recent court treatment of Section 101 as applied to manufacturing patents. The panel will also examine the challenges and strategies to overcome them. The panel will discuss practical considerations for patent eligibility, including USPTO guidance and alternatives to patent protection. The panel will offer best practices for protecting methods of manufacturing.

Description

Over the past several years, software and biotech/pharma patents have seen Section 101 rejections climb since the Alice Corp. decision [CLS Bank v. Alice Corp. (Fed. Cir. 2013)]. Method of manufacturing patents have seemed to be immune from patent eligibility challenges under Alice. This is no longer the case.

In American Axle, the Federal Circuit determined method of manufacturing claims were ineligible [Am. Axle & Mfg. Inc. v. Neapco Holdings L.L.C. (Fed. Cir. 2020)]. Further, in a split decision denying a request for rehearing en banc, the court showed how divided it is on post-Alice patent eligibility.

Before the American Axle decision, the Federal Circuit held method of manufacturing claims related to a garage door controller were ineligible [The Chamberlain Group Inc. v. Techtronic Industries Co. (Fed. Cir. 2019)]. The court concluded the claims were invalid as directed toward the abstract idea under the Alice two-step test. Recently, in Illumina v. Ariosa, (Fed. Cir. 2020), the court found the claimed method of concentrating cffDNA is a patent-eligible process. Also, a federal district court held a company's manufacturing patent was invalid under Alice [Palomar Techn. Inc. v. MRSI Sys. L.L.C. (D. Mass. 2020)].

Patent counsel must understand how the courts are applying Alice and questions of eligibility to the method of manufacturing patents to offer guidance on protecting manufacturing methods.

Listen as our authoritative panel of patent attorneys examines patent eligibility for method of manufacturing patents. The panel will discuss how courts are treating patent eligibility under Section 101 and applying it to the method of manufacturing patents. The panel will also examine where the challenges are being raised and strategies to overcome them. The panel will discuss practical considerations for patent eligibility and offer best practices for protecting methods of manufacturing.

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Outline

  1. Patent eligibility for manufacturing patents
  2. Court treatment
  3. Overcoming common challenges
  4. Practical considerations
  5. USPTO guidance
  6. Best practices for protecting methods of manufacturing

Benefits

The panel will review these and other key issues:

  • Application of Alice to manufacturing patents
  • Recent court treatment, including American Axle and Palomar decisions
  • Best practices for protecting methods of manufacturing

Faculty

Borella, Michael
Dr. Michael S. Borella, Ph.D., J.D.

Partner; Co-Chair Software and Business Methods Practice Group
McDonnell Boehnen Hulbert & Berghoff

Dr. Borella provides legal and technological advice in support of validity, infringement, patentability analyses, and...  |  Read More

Reid, Steven
Dr. Steven Reid, Ph.D., J.D.

Senior Counsel
Schwegman Lundberg & Woessner

Dr. Reid’s practice entails the procurement of patents and related counseling in the chemical arts, particularly...  |  Read More

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