The Innovation Firm

When

October 4, 2017
12:00 - 1:30 PM

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

Determining the eligibility of a claim in a patent or patent application under 35 U.S.C. § 101 has become a challenging task, particularly in the fields of business methods, computer software, and biotechnology.  In 2014, the U.S. Patent and Trademark Office (USPTO) issued guidance for use in evaluating the eligibility of claimed subject matter based on the Supreme Court’s decision in Alice Corp v. CLS Bank.

Despite these guidelines, and despite many hypothetical examples provided by the United States Patent and Trademark Office since Alice, there is wide-spread disagreement and confusion over application of the Supreme Court’s decision.  As a result, patentees and patent applicants must have a thorough understanding of patent eligibility doctrine.

The panel discussed the examination guidelines and some examples published by the U.S. Patent Office, a short history of the current state of subject matter eligibility, and briefly summarize and critique proposals for amending the governing statute, 35 U.S.C. § 101, announced by three major American intellectual property associations.  The panel will also introduce a proposed alternative and offer some related practical guidance for prosecution before the Patent Office. 

Key topics include:

  • Two-Step Analysis
  • Recent Case Law
  • Risks and Pitfalls
  • Proposed Amendments to the Current Statute and Implications
  • Alternative to Amendments to the Current Statute
  • Practical Guidance

 

Click here for a link to a free registration for the first 30 registrants. Enter and apply the discount code HAMILTON146403

Enter and apply HAMILTON146403 in the discount code portion of the registration form before hitting the submit order button for a free registration courtesy of our firm. Note:  There is a minimal fee for processing. $125 for CLE processing in the state of Virginia. $75 for CLE processing in Montana and South Carolina, and HRCI credit processing. $50 for CLE processing in the states not mentioned, CPE, SHRM and other CE credit processing. Late penalty fees for IL, TX and WA not included. For more info, visit https://www.theknowledgegroup.org/credit-info/ or email info@theknowledgegroup.org

 

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

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

Mary Murray, Ph.D. 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.”

Overview

When

October 4, 2017
12:00 - 1:30 PM

Determining the eligibility of a claim in a patent or patent application under 35 U.S.C. § 101 has become a challenging task, particularly in the fields of business methods, computer software, and biotechnology.  In 2014, the U.S. Patent and Trademark Office (USPTO) issued guidance for use in evaluating the eligibility of claimed subject matter based on the Supreme Court’s decision in Alice Corp v. CLS Bank.

Despite these guidelines, and despite many hypothetical examples provided by the United States Patent and Trademark Office since Alice, there is wide-spread disagreement and confusion over application of the Supreme Court’s decision.  As a result, patentees and patent applicants must have a thorough understanding of patent eligibility doctrine.

The panel discussed the examination guidelines and some examples published by the U.S. Patent Office, a short history of the current state of subject matter eligibility, and briefly summarize and critique proposals for amending the governing statute, 35 U.S.C. § 101, announced by three major American intellectual property associations.  The panel will also introduce a proposed alternative and offer some related practical guidance for prosecution before the Patent Office. 

Key topics include:

  • Two-Step Analysis
  • Recent Case Law
  • Risks and Pitfalls
  • Proposed Amendments to the Current Statute and Implications
  • Alternative to Amendments to the Current Statute
  • Practical Guidance

 

Click here for a link to a free registration for the first 30 registrants. Enter and apply the discount code HAMILTON146403

Enter and apply HAMILTON146403 in the discount code portion of the registration form before hitting the submit order button for a free registration courtesy of our firm. Note:  There is a minimal fee for processing. $125 for CLE processing in the state of Virginia. $75 for CLE processing in Montana and South Carolina, and HRCI credit processing. $50 for CLE processing in the states not mentioned, CPE, SHRM and other CE credit processing. Late penalty fees for IL, TX and WA not included. For more info, visit https://www.theknowledgegroup.org/credit-info/ or email info@theknowledgegroup.org

 
Presenter Bios

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

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

Mary Murray, Ph.D. 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.”

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