Patent Subject Matter Eligibility: Navigating the New USPTO Guidance
Analyzing Subject Matter and Avoiding Rejection Under the USPTO's Detailed Framework
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will examine the new USPTO Interim Guidance and the analysis for determining patent subject matter eligibility. The panel will provide best practices for applying the new guidelines in application drafting and prosecution, and will also provide insight into how the Interim Eligibility Guidance may impact strategies involving owned or in-licensed intellectual property.
Outline
- Overview of new subject matter eligibility guidance
- December 2014 interim guidance
- March 2014 Myriad/Mayo Guidelines
- Flowchart
- Information practitioners need to address stages/decision points
- Factors to help establish prima facie subject matter eligibility/ineligibility
- What if you receive section 101 rejection anyway? (your analysis different from examiner's)
- Examples
- Biotech and what is missing from these examples
- Chemical and what is missing from these examples
- Guideline's impact on other industries
- Practical implications and best practices in light of the new guidance
Benefits
The panel will review these and other key questions:
- How do the Myriad/Mayo Guidelines and the new Interim Guidance change the landscape for patentable subject matter?
- How can counsel show "significant difference" from a natural material, law or phenomenon?
- How will examiners apply the new guidance?
- What are best practices for drafting and prosecuting involved applications?
- How does the Interim Guidance effect strategy involving owned and licensed IP?
Faculty
Amelia Feulner Baur, Ph.D
Founding Partner
McNeill Baur
Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and... | Read More
Dr. Baur’s practice covers a broad spectrum of intellectual property issues, including patent preparation and prosecution, coordination of worldwide patent strategies, appeals to the Patent Trial and Appeal Board and the Court of Appeals for the Federal Circuit. She has extensive experience working with clients to develop effective patent strategies to meet business goals. This includes landscape analyses, due diligence investigations, and providing patentability, freedom-to-operate, infringement, and validity opinions. She has also led clients through inter partes review (IPR), reexaminations, interferences, and the settlement of patent disputes.
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Leslie A. McDonell
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. McDonell provides strategic counseling on the procurement and protection of IP in the pharmaceutical,... | Read More
Ms. McDonell provides strategic counseling on the procurement and protection of IP in the pharmaceutical, biotechnology, and medical device industries. She coordinates worldwide patent portfolio strategies, evaluates and analyzes competitors' patent positions around the world, and advises and renders opinions on issues of patentability, inventorship, validity, claim scope, infringement, and freedom to operate.
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Donna M. Meuth
Associate General Counsel
Eisai
Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent... | Read More
Ms. Meuth has diverse experience in intellectual property law, including patent portfolio management, patent prosecution and litigation. Her technical focus is in the pharmaceutical, chemical and biotechnology arts. She has significant interference experience and litigation experience, in particular ANDA litigation for branded pharmaceuticals.
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