Patentable Subject Matter after Alice: Best Practices for Addressing 35 U.S.C. § 101 (Live MBHB Webinar)

It has been over 18 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business method patents and applications now receive a higher level of scrutiny under Alice than had previously been the case. The impact of this decision cannot be underestimated – post Alice, approximately 70% of all patents challenged under 35 U.S.C. § 101 have been invalidated in district courts, while the rate of § 101 rejections has exceeded 80% in some of the USPTO’s art units where it was previously below 40%. As a consequence, patentees have become increasingly concerned about whether key patents in their portfolios might be subject to an Alice challenge in litigation, as well as whether their new technologies are protectable.

Nonetheless, there are a few bright points with respect to how one can navigate the § 101 waters post-Alice. Best practices are emerging for prosecuting software and business method inventions under this new regime. Many of these practices are based on case law, as well as on guidance provided by the USPTO in December 2014, and well as January and July of last year.

In this webinar, we will review the case law, USPTO § 101 guidance, and other sources, and provide an array of strategies for patent drafting and prosecution that will help you (1) avoid § 101 rejections, and (2) address § 101 rejections that you do receive. Each of our examples will be based on our actual experience with overcoming § 101 rejections in the USPTO.


Presenter: MBHB partner Michael S. Borella, Ph.D.


Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording.

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.