The Innovation Firm

When

October 4, 2017
12:00 - 2:00 p.m.

Effective Tools & Techniques to Minimize Section 101 Rejection in a Patent Prosecution Minefield

Join Principals Scott Pierce and Mary Murray, Ph.D., along with Patent Agent Adelaide K. Leitzel of Taft Stettinius & Hollister LLP for a webcast on the basics of mitigating risks of Section 101 rejections. Join the speakers as they delve into the depth-analysis of the current trends and recent court rulings involving this significant topic. Speakers will also provide the audience with practical strategies in overcoming a Section 101 rejection.

Determining the eligibility of a claim in a patent or patent application for Section 101 protection has become a challenging task for patent holders and patent applicants. In 2014, the U.S. Patent and Trademark Office's (USPTO's) has issued a two-step Alice analysis to serve as guidance in evaluating a claim's subject matter eligibility.

However, patent examiners and applicants often disagree on its application to a given invention. Faced with tenacious rejections and dramatic § 101 jurisprudence changes, applicants must be well-versed in preparing a patent application and litigating patent cases.

Key topics include:

  • Preparing a Patent Application
  • Trends in § 101 Rejections
  • The Two-Step Alice/Mayo Analysis
  • Recent Case Laws
  • Risks and Pitfalls
  • Best Strategies to Minimize and Overcome Rejection Risks
     

Click here for a link to a free registration for the first 60 registrants.

 

N. Scott Pierce
Principal
Hamilton, Brook, Smith & Reynolds, P.C.

Scott is a patent prosecutor with almost thirty years of experience at Hamilton, Brook, Smith & Reynolds, P.C.  He also serves on the Firm’s Management Committee.

Scott is an adjunct professor at Suffolk University Law School teaching biotechnology patent law and the author of numerous published academic articles. Recent articles on patent eligibility include “Three Patent Eligibility Statute Proposals – And An Alternative,” (Law360 July 31, 2017); “Patent Eligibility as a Function of New Use, Aggregation, and Preemption Through Application of Principle,” 23 Rich. J. L. & Tech 11 (2017); and “A Great Invisible Crashing: The Rise and Fall of Patent Eligibility through Mayo v. Prometheus” 23 Fordham Intellectual Prop., Media & Ent. L. 186 (2012).
 

Mary Murray
Principal
Hamilton, Brook, Smith & Reynolds, P.C.

Mary has an extensive scientific background and has been a patent attorney for over twenty years.  She was elected to the Board of Mass MEDIC, where she served for six years, and as an officer for three years.  Prior to becoming a patent attorney, Mary participated in grant review panels for the U.S. Department of Agriculture, National Institutes of Health and the National Science Foundation.  She also authored or co-authored over fifty peer-reviewed scientific publications.

An alumnus of Suffolk University Law School, Mary is also the Chairperson of the law school’s Intellectual Property Advisory Board, which is dedicated to advancing the legal and professional training of law students and the intellectual property community.  Mary is an active speaker, moderator, and author on issues relating to intellectual property, recently speaking at MassBio on the topic “Innovation in Life Sciences: Demystifying Patent Eligibility.”
 

Adelaide K. Leitzel
Patent Agent
Taft Stettinius & Hollister LLP

Dr. Adelaide K. Leitzel, a registered patent agent, holds a Ph.D. in genetics and molecular biology from the University of North Carolina and received her undergraduate degree in biology and history from Davidson College in Davidson, North Carolina.  She has extensive experience in drafting and prosecuting patent applications for inventions from diverse areas including genetics, transgenic animals, immunology, bacteriology, cardiology, nephrology, pulmonology, diagnostic methods, transgenic plants, plant pathology, and plant development.  Her research was published in the journal Yeast.  Dr. Leitzel is a registered patent agent with the U.S. Patent and Trademark Office.  She practices in the area of Patent Prosecution with a focus on Life Sciences. Dr. Leitzel has published multiple articles on the unique aspects of life sciences patent prosecution, especially the Myriad decisions.

Overview

When

October 4, 2017
12:00 - 2:00 p.m.

Join Principals Scott Pierce and Mary Murray, Ph.D., along with Patent Agent Adelaide K. Leitzel of Taft Stettinius & Hollister LLP for a webcast on the basics of mitigating risks of Section 101 rejections. Join the speakers as they delve into the depth-analysis of the current trends and recent court rulings involving this significant topic. Speakers will also provide the audience with practical strategies in overcoming a Section 101 rejection.

Determining the eligibility of a claim in a patent or patent application for Section 101 protection has become a challenging task for patent holders and patent applicants. In 2014, the U.S. Patent and Trademark Office's (USPTO's) has issued a two-step Alice analysis to serve as guidance in evaluating a claim's subject matter eligibility.

However, patent examiners and applicants often disagree on its application to a given invention. Faced with tenacious rejections and dramatic § 101 jurisprudence changes, applicants must be well-versed in preparing a patent application and litigating patent cases.

Key topics include:

  • Preparing a Patent Application
  • Trends in § 101 Rejections
  • The Two-Step Alice/Mayo Analysis
  • Recent Case Laws
  • Risks and Pitfalls
  • Best Strategies to Minimize and Overcome Rejection Risks
     

Click here for a link to a free registration for the first 60 registrants.

 
Presenter Bios

N. Scott Pierce
Principal
Hamilton, Brook, Smith & Reynolds, P.C.

Scott is a patent prosecutor with almost thirty years of experience at Hamilton, Brook, Smith & Reynolds, P.C.  He also serves on the Firm’s Management Committee.

Scott is an adjunct professor at Suffolk University Law School teaching biotechnology patent law and the author of numerous published academic articles. Recent articles on patent eligibility include “Three Patent Eligibility Statute Proposals – And An Alternative,” (Law360 July 31, 2017); “Patent Eligibility as a Function of New Use, Aggregation, and Preemption Through Application of Principle,” 23 Rich. J. L. & Tech 11 (2017); and “A Great Invisible Crashing: The Rise and Fall of Patent Eligibility through Mayo v. Prometheus” 23 Fordham Intellectual Prop., Media & Ent. L. 186 (2012).
 

Mary Murray
Principal
Hamilton, Brook, Smith & Reynolds, P.C.

Mary has an extensive scientific background and has been a patent attorney for over twenty years.  She was elected to the Board of Mass MEDIC, where she served for six years, and as an officer for three years.  Prior to becoming a patent attorney, Mary participated in grant review panels for the U.S. Department of Agriculture, National Institutes of Health and the National Science Foundation.  She also authored or co-authored over fifty peer-reviewed scientific publications.

An alumnus of Suffolk University Law School, Mary is also the Chairperson of the law school’s Intellectual Property Advisory Board, which is dedicated to advancing the legal and professional training of law students and the intellectual property community.  Mary is an active speaker, moderator, and author on issues relating to intellectual property, recently speaking at MassBio on the topic “Innovation in Life Sciences: Demystifying Patent Eligibility.”
 

Adelaide K. Leitzel
Patent Agent
Taft Stettinius & Hollister LLP

Dr. Adelaide K. Leitzel, a registered patent agent, holds a Ph.D. in genetics and molecular biology from the University of North Carolina and received her undergraduate degree in biology and history from Davidson College in Davidson, North Carolina.  She has extensive experience in drafting and prosecuting patent applications for inventions from diverse areas including genetics, transgenic animals, immunology, bacteriology, cardiology, nephrology, pulmonology, diagnostic methods, transgenic plants, plant pathology, and plant development.  Her research was published in the journal Yeast.  Dr. Leitzel is a registered patent agent with the U.S. Patent and Trademark Office.  She practices in the area of Patent Prosecution with a focus on Life Sciences. Dr. Leitzel has published multiple articles on the unique aspects of life sciences patent prosecution, especially the Myriad decisions.

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