Patent Eligibility: Latest USPTO Guidelines for Information Technology

McDonnell Boehnen Hulbert & Berghoff LLP partner Michael Borella, Ph.D. is a featured speaker for an IPO IP Chat Channel webinar entitled, “Patent Eligibility: Latest USPTO Guidelines for Information Technology,” which is set for 1:00 p.m. CT on November 7, 2019.

Event Description

Last month the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this update is primarily an effort to clarify issues brought up by public comments on the January Guidance and focuses on clarifying practice for patent examiners.

The panel features a USPTO official, an in-house counsel involved in computer cloud software and services, and a prosecutor specializing in computer and software technologies. The program offers attendees an opportunity to get answers to their questions on the guidance.

  • Each theme in the guidance will be addressed:
  • Evaluating whether a claim recites a judicial exception;
  • The groupings of abstract ideas enumerated in the 2019 PEG;
  • Evaluating whether a judicial exception is integrated into a practical application;
  • The prima facie case and the role of evidence with respect to eligibility rejections; and
  • The application of the 2019 PEG in the patent examining corps.

Many practitioners find that the majority of § 101 disputes with the USPTO examiners or PTAB turns on whether the claimed invention integrates a judicial exception into a practical application. Our panelists will discuss in detail what help the new guidance does and doesn’t provide in this regard. The private sector panelists also will discuss the practical implications of the gap between USPTO guidance and Federal Circuit case law.

View registration details here