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Subject Matter Eligibility for Mechanical Patents: Implications of American Axle, Abstractness, and Laws of Nature

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

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Conducted on Wednesday, December 7, 2022

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This CLE webinar will guide patent counsel on subject matter eligibility for mechanical patents. The panel will discuss the American Axle decision and its implications for mechanical patents. The decision(s) in American Axle brought the issues of abstractness and laws of nature to practitioners in the mechanical arts. The panel will offer best practices for applying recent court guidance in application drafting and prosecution.

Description

Earlier this year, the Supreme Court denied certiorari in American Axle & Mfg. v. Neapco Holdings L.L.C., a mechanical patent case that many thought provided an opportunity for clarity on the issue of subject matter eligibility. Subject matter eligibility has been an issue for biotech and software practitioners for years. With this decision, mechanical patent applicants face this challenge too.

Under Section 101, an invention must be a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" to be patent eligible. Inventions cannot be abstract ideas or laws of nature as they do not meet the Section 101 requirements. They must fall within one of the following categories: process, machine, manufacture, or composition of matter.

When patenting mechanical inventions that utilize a law of nature, it is critical that the claims and the specification allow the application to overcome potential Section 101 issues. Claims should include specific mechanisms, physical structures, or steps that make use of a law of nature to demonstrate it is more than "simply stat[ing] a law of nature while adding the words 'apply it'" as the Federal Circuit stated.

Listen as our panel examines the American Axle decision and its implications for mechanical patents. The panel will provide guidance to practitioners on subject matter eligibility, particularly in view of the Supreme Court denying cert in American Axle. The decision(s) in American Axle brought the issues of abstractness and laws of nature to practitioners in the mechanical arts. The panel will offer best practices for applying recent court guidance in application drafting and prosecution.

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Outline

  1. American Axle and other recent decisions
  2. Implications for mechanical patents
    1. Abstractness
    2. Laws of nature
  3. Best practices for application drafting and prosecution for mechanical inventions

Benefits

The panel will review these and other key questions:

  • What are the eligibility challenges for mechanical patent applications?
  • How does the Supreme Court's decision change the playing field for 101 eligibility for mechanical patents?
  • What are best practices for drafting and prosecuting mechanical patent applications?

Faculty

Bahr, Robert
Robert W. Bahr

Deputy Commissioner for Patents
USPTO

Mr. Bahr is a Deputy Commissioner for Patents. He serves as an authority on patent laws, rules, and examining practice...  |  Read More

Christensen, Dave
Dave S. Christensen

Partner; Co-Chair of the Mechanical Engineering Practice and Chair of the Additive Manufacturing Practice
Cantor Colburn

Mr. Christensen leads teams dedicated to responsive client focused service and oversees the workflow and provision of...  |  Read More

Watts, Brad
Brad Watts
Minority Chief Counsel Senate Judiciary Committee Subcommittee on Intellectual Property
U.S. Senate

Mr. Watts is responsible for planning and implementing Ranking Member Thom Tillis and the Republican minority’s...  |  Read More

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