Tues., Feb. 16, 2021 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx
The Alice v. CLS Bank test has proven to be virtually impenetrable and exceptionally difficult to apply in practice. As a consequence, innovators are unsure of the exact boundaries of patentable subject matter under 35 U.S.C. 101. This has increased the risk of making investments in protecting software and business method inventions. Our position is that a literal understanding of the test is not possible, because it is too vague and poorly defined. Nonetheless, a reasonably accurate way of predicting whether claims will survive an Alice challenge in the USPTO or courts is available. Particularly, a careful review of Federal Circuit Section 101 case law since 2014 results in three factors that, when present, make claims more likely to be eligible. Conversely, the lack of any of these factors make it less likely that the claim will be found eligible. We discuss these factors in detail, including how they are derived from the case law, and use them as an analytical framework for determining patenting strategy.
Presenter(s): MBHB attorney(s) Michael Borella, Ph.D.
McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.
NOTE: MCLE credit is not available for this archived recording.