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.
• 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
• Patents and the Federal Circuit, Tenth Edition• Patent Prosecution: Law, Practice, and Procedure, Seventh Edition• Patent Law and Practice, Seventh Edition