Patent subject matter eligibility jurisprudence under 35 U.S.C. §101 has been in flux in recent years, with decisions from the Supreme Court and Federal Circuit invalidating dozens of issued patents across varied industries, from banking to software development to pharmaceuticals and diagnostic methods. However, guidance from the USPTO provided to Patent Examiners and the Patent Trial and Appeals Board in 2019 provides some clarity and a path to patentability for these industries. This presentation will examine the guidance in depth and review recent decisions on patent eligibility and provides tips and strategies for application drafting and patent prosecution to overcome eligibility rejections.
The USPTO also released guidance in 2019 for determining written description and enablement support under 35 U.S.C. §112 in view of the Federal Circuit’s decision in Williamson v. Citrix Online, LLC. The §112 guidance will affect large numbers of software-related patent applications and may cause structural claim limitations to be interpreted functionally and narrowly. This presentation will also examine this guidance and the Williamson decision and their effect on software-related applications, provide tips and strategies for application drafting in view of avoiding adverse claim interpretations and rejections, and is critical for patent prosecutors, litigators, and corporate IP counsel to obtain and enforce strong patent protection.
- Patent Subject Matter Eligibility under 35 U.S.C. §101
- Supreme Court and Federal Circuit jurisprudence
- USPTO’s 2019 Guidance to Examiners and PTAB
- Recent decisions on eligibility
- Particular Issues with Software Patents and 35 U.S.C. §112
- Functional Claiming
- Williamson v. Citrix Online and the USPTO’s 2019 Guidance
- Recent decisions invalidating patents under §112
- Strategies for Application Drafting and Prosecution