Patent Eligibility: USPTO's Latest Guidelines for Information Technology (RECORDING)

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. 


Michael Borella, McDonnell Boehnen Hulbert & Berghoff 

Matthew Sked, USPTO

Mark Vallone, IBM

Michael Borella

McDonnell Boehnen Hulbert & Berghoff LLP

Michael Borella is a partner with McDonnell Boehnen Hulbert & Berghoff and serves as chair of its Software & Business Methods Practice Group. Mike has drafted or been involved in the prosecution of hundreds of patents in the U.S., as well as in other jurisdictions. Prior to joining MBHB, Mike served on the management teams of Fastmobile, UTStarcom, and 3Com.

Matthew Sked


Matt Sked is a Senior Legal Policy Advisor at the USPTO. He has played a role in the formulation the agency’s patent eligibility guidance for the past 5 years. Earlier he worked as a patent examiner in the electronic arts.  

Mark Vallone


Mark Vallone is lead IP Counsel for IBM’s Cloud Platform. He is responsible for managing the patent procurement team in support of IBM Cloud, IBM Services, and Global Markets. Earlier he was in private practice and worked as a software engineer at IBM.


Patent Eligibility: USPTO Latest Guidelines for Information Technology (RECORDING)
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