Subject Matter Eligibility: Navigating Expanding Instability in Sect. 101 Inquiry

Applying USPTO and Court Guidance in Drafting and Prosecuting Patent Applications

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


Conducted on Tuesday, September 14, 2021

Recorded event now available

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Course Materials

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.

Description

The Federal Circuit Court of Appeals 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.

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Outline

  1. Yu v. Apple and other recent decisions
  2. USPTO guidance
  3. Expanded scope of ineligible subject matter
  4. Best practices for application drafting and prosecution

Benefits

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?

Faculty

Kiklis, Michael
Michael L. Kiklis

Member
Bass Berry & Sims

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit...  |  Read More

Kunin, Stephen
Stephen G. Kunin

Partner
Maier & Maier

Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also...  |  Read More

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