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Exploring Patent Subject Matter Eligibility Jurisprudence Post-Alice to Successfully Navigate Section 101 Criteria

Recorded on: Jan. 24, 2018
Running Time: 01:02:55

Full Transcript:



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Taken from the audio only One-Hour Briefing Recorded January 2018 in New York

Exploring Patent Subject Matter Eligibility Jurisprudence Post-Alice to Successfully Navigate Section 101 Criteria [01:02:55]

The presenters will explore the historical framework of patentable subject matter eligibility through the lens of Supreme Court law. Subsequent to Alice v. CLS Bank, the Federal Circuit has clarified the contours of the two-part test first laid out in Prometheus v. Mayo providing important guidance to practitioners on how to satisfy the two-part test for subject-matter eligibility. Michael L. Kiklis and Stephen G. Kunin, partners at Oblon, McClelland, Maier & Neustadt, L.L.P. will discuss these contours and provide practice tips on how to handle 101 at the district court, in CBM proceedings, as well as at the PTO.   

Highlights include: 

  • A review of Supreme Court precedent on patent subject matter eligibility 
  • A focus on key Federal Circuit cases that clarify the contours of satisfying section 101 criteria
  • A review of USPTO guidance and PTAB decisions on how to meet the two-part test for eligibility
  • Proffer practice tips for successfully navigating section 101 in litigation, CBM proceedings, and prosecution, including robust patent specification and claim drafting as well overcoming patent examiner section 101 rejections

Presentation Material

  • 35 U.S.C. § 101: Life After Alice
    Michael L. Kiklis , Stephen G. Kunin
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