Section 101: Revised USPTO Guidance on Patent Eligibilty (RECORDING)

Recorded On: 01/23/2019

This webinar features the USPTO’s Deputy Commissioner for Patent Examination Policy, a top in-house counsel, and an experienced patent prosecutor.  They will analyze the USPTO’s revised guidance on patent eligibility that was issued earlier this month ‒ and discuss how the Office is expected apply the U.S. Supreme Court’s Alice/Mayo test for subject matter eligibility going forward.

The new guidance supersedes conflicting sections in the Manual of Patent Examining Procedure, prior guidance, and prior memoranda.  The panel will elucidate the key ways the new guidance is expected to impact criteria and procedures.  In addition, the panel will explore:

  • What some see as remaining ambiguities in the guidance, such as the determination of what constitutes a “practical application”
  • Arguments that could be made to examiners based on the new guidance
  • How to best make a request to file supplemental briefing to show how claims are compliant with the new guidance
  • The challenges the USPTO faces in interpreting Federal Circuit case law on this topic

Speakers:  

  • Robert Bahr, U.S. Patent & Trademark Office 
  • Gary Ganzi, Evoqua Water Technologies
  • Michelle Holoubek, Sterne, Kessler, Goldstein & Fox, PLLC

Robert Bahr

U.S. Patent & Trademark Office

is Deputy Commissioner for Patent Examination Policy at the USPTO,
overseeing examining practice and procedure and establishing patent examination
and documentation policy standards for the Commissioner for Patents. Prior to
his current position, Mr. Bahr served as the Senior Patent Counsel to the
Deputy Commissioner for Patent Examination Policy, where he was involved in
virtually every patents-related rulemaking since 1995. He began his career at
the USPTO in 1984 as a patent examiner.

Gary Ganzi

Evoqua Water Technologies LLC

is Senior Counsel and Head of Intellectual Property for Evoqua Water Technologies, as he was for its corporate predecessor Siemens Water Technologies.  He is named as an inventor on 35 U.S. patents in fields related to water treatment.  Gary serves on the Board of Directors of IPO and as board liaison of the IPO U.S. Patent Office Practice Committee.

Michelle Holoubek

Sterne, Kessler, Goldstein & Fox, PLLC

is a Director in the Electronics Group at Sterne Kessler Goldstein &
Fox. She has handled hundreds of software and business method applications at
the USPTO. Patent-eligible subject matter is her special area of expertise. In
addition to the preparation and prosecution of patents, she has been lead
counsel in IPRs, CBMs, and reexaminations for both patent owners and
challengers.

Key:

Complete
Failed
Available
Locked
Section 101: Revised USPTO Guidance on Patent Eligibility
Open to view video.
Open to view video.
Survey
11 Questions
IL Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Illinois has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the “claim credits” and then “view/print your certificate” for your records.
NY Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available This course was approved in Virginia, a NY approved jurisdiction, for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the “claim credits” and then “view/print your certificate” for your records.
VA Certificate of Attendance
Up to 1.00 CLE credits available  |  Certificate available
Up to 1.00 CLE credits available  |  Certificate available Virginia has approved this recording for 1 hour of CLE credit. Only registered attendees that viewed the on-demand program are eligible to claim credit. To claim your credit, select the “claim credits” and then “view/print your certificate” for your records.