Prometheus in the Post-Bilski Age: Patentable Subject Matter Under Continued Attack

Procuring, Asserting or Defending Against Patentability Amid Increasingly Strict Statutory Subject Matter Standards

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

Conducted on Tuesday, May 1, 2012

Recorded event now available

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Course Materials

This CLE course will prepare patent counsel to argue patentability under 35 U.S.C. Section 101, discuss the impact of recent Federal Circuit and ITC decisions—including the Supreme Court's Prometheus ruling, and offer best practices for patent seekers to meet subject matter eligibility requirements.


Since the Supreme Court’s 2010 decision in Bilski, the Federal Circuit has used multiple single approaches to address the issue of patentable subject matter—but what is and what is not patentable seems to be a moving target. Recent decisions demonstrate the divisions within the Federal Circuit.

The Supreme Court addressed patentable subject matter again in its Mar. 20, 2012, decision in Mayo Collaborative Servs. v. Prometheus Labs. The Court discussed how a process involving the application of a law of nature can still be patentable subject matter.

The Federal Circuit and ITC, a popular forum in matters involving foreign infringers, continue to zero in on the scope of patentable subject matter under Section 101. As the courts develop procedural guidelines on how the issue should be considered, patent counsel must stay abreast of these crucial developments.

Listen as our authoritative panel of patent counsel examines the current state of patentable subject matter under Section 101, reviews recent decisions by the Federal Circuit and the ITC, discusses lessons from those decisions, and offers best practices for meeting subject matter eligibility requirements.



  1. Landscape
    1. Fallout since Bilski
    2. PTO approach and guidance
  2. Court and ITC treatment post Bilski and lessons learned
    1. Impact of Mayo v. Prometheus on application of Bilski
  3. Best practices for applicants and practitioners


The panel will review these and other key questions:

  • What criteria are required to establish subject matter eligibility for patents?
  • How have the decisions since Bilski impacted patent eligibility? What lessons can be learned from the decisions for future patentability challenges?
  • What strategies should patent applicants employ to improve the likelihood of a successful patent application?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Stephen T. Schreiner
Stephen T. Schreiner

Goodwin Procter

Mr. Schreiner focuses on all aspects of intellectual property law including patent litigation, patent prosecution,...  |  Read More

Dean A. Morehous
Dean A. Morehous

Of counsel
Winston & Strawn

He has substantial litigation experience in intellectual property, technology matters, insurance coverage, and general...  |  Read More

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