In January 2019, the USPTO published revised guidance for determining subject matter eligibility under 35 U.S.C. § 101 (Guidance) that splits step 2A of the USPTO’s Mayo/Alice test into two prongs. Under the new first prong, the revised Guidance (1) provides explicit groupings of subject matter that may be considered an abstract idea, and under the new second prong, the revised Guidance clarifies that a claim is not “directed to” a judicial exception if the claim integrates the exception into a practical application. This guidance may allow patent applications to avoid step 2B entirely by providing pathways to find more claim eligible at step 2A.
In this timely web conference, join Foley’s seasoned patent counseling attorneys as they discuss best practices for preparation and prosecution in view of the 2019 Revised Patent Subject Matter Eligibility Guidance. While the Guidance is designed to bring about more accurate, predictable, and consistent application of the subject matter eligibility requirement of § 101, care is still needed to navigate through this confusing area of law, particularly with regard to software related applications as well as medical patents that use algorithms for diagnosis and treatment decisions in personalized medicine.
Other topics for discussion include:
- Key Takeaways and Evaluating the 2019 Revised Patent Subject Matter Eligibility Guidance
- Section 101—Understanding Steps 2A and 2B
- Prosecution Strategies for Obtaining Valuable Patents Under New Guidance
- Patenting Machine Learning and AI Innovations: Strengthen Your Claims to Avoid Rejection
- Medical Device, Pharmaceutical, and Personalized Medicine Perspectives
- Potential Effects on Federal Circuit Decisions
Foley & Lardner LLP will apply for CLE credit after the program, wherever applicable. Foley & Lardner LLP certifies that this activity has been approved for California MCLE credits by the State Bar of California in the amount of 1.0 General credit hour. Foley & Lardner LLP is a State Bar of California MCLE approved provider. Please note that participants must log in to the web portion on the date of the event and answer the CLE polling question; credit may not be obtained by viewing and/or listening to a program recording after the event. Certificates of attendance will be distributed to eligible participants approximately eight weeks after the webinar via email.
This program is appropriate for newly admitted and experienced attorneys.
New York licensed attorneys admitted two years or less are not eligible to earn CLE credit through nontraditional formats.