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A Year after Bilski v. Kappos, the Patentable Subject Matter Struggle Continues



Wednesday, December 7, 2011
Product Code - LGAU02
Speaker(s): Andrew T. Spence, Smith Moore Leatherwood LLP; Kimberly Bullock Gatling, Smith Moore Leatherwood LLP
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Over a year has passed since the Supreme Court addressed the issue of patentable subject matter in Bilski v. Kappos, and the patent community continues to struggle with patent eligibility. The Supreme Court’s decision seems to have raised more issues than it resolved, and from the courts to the PTO, differences of opinion on patent eligibility persist both within and between the courts and PTO.

This program will include a discussion of a number of relevant district court and Federal Circuit decisions since Bilski as well as the PTO’s formal and perceived views on Bilski. The presenters will discuss how applicants can proceed at the PTO to best position themselves to not only achieve an issued patent, but one with a higher likelihood of sustaining a statutory subject matter challenge. The program will provide those in attendance with an appreciation of the differing views on patent eligibility, and practical tips for dealing with those views.

  

Educational Objectives:

• Recognize differences of interpretation of statutory subject matter within and between courts and the PTO
• Draft patent applications to accommodate claims for varying interpretations of statutory subject matter
• During prosecution of a patent application, talk to examiners regarding their particular requirements of patent eligibility, and avoid appealing a disagreement on the issue to the Board of Patent Appeals & Interferences
• Toward the end of prosecution of a patent application, evaluate (or re‐evaluate) how different courts may resolve a statutory‐subject‐matter challenge to its claims, and consider amending and/or adding claims to account for any discrepancies

Who would benefit most from attending this program?

PTO stakeholders including practitioners, applicants and industry participants, particularly those more involved in the preparation and prosecution of patent applications.

Andrew T. Spence, Smith Moore Leatherwood LLP; Kimberly Bullock Gatling, Smith Moore Leatherwood LLP

Andrew T. Spence / Smith Moore Leatherwood LLP
Andy Spence is a partner in the patent group of Smith Moore Leatherwood and concentrates his practice in the area of intellectual property focusing on patent procurement in the electrical, computer software and business method arts. Mr. Spence has over eleven years of experience handling complex patent matters for companies in various fields covering a number of diverse technologies, including telecommunications, aerospace and e‐commerce. He has also handled post‐issuance patent matters including ex parte and inter partes reexamination, has assisted clients in patent interference and reissue proceedings, and regularly counsels clients on a number of other intellectual property matters including patent infringement, validity and enforceability issues, and intellectual property due diligence. He is an award‐winning author and regular speaker on patent law matters, most recently speaking at seminars in China and Taiwan.

Mr. Spence earned a J.D. from Washington University and a B.S.E.E., magna cum laude, from the University of Missouri.

Kimberly Bullock Gatling / Smith Moore Leatherwood LLP
Kim Gatling concentrates her practice in patent and trademark prosecution, licensing, and litigation. Particularly, she prosecutes computer software, business method, and mechanical patent applications, as well as trademark applications, before the United States Patent and Trademark Office. Ms. Gatling also drafts and negotiates agreements for IT transactions, including software development and maintenance agreements, and advises clients on computer law and Internet issues. She further advises clients with regards to copyright registration and litigation. In addition, Ms. Gatling is an active member of the firm’s alcohol and tobacco regulatory teams.

Ms. Gatling earned a J.D. from George Washington University and a B.S., cum laude, from North Carolina A&T State University.