Fundamentals of Patent Eligibility

Gain an understanding of the current patent strategies that are more likely to be successful with the proper specifications needed to ensure eligibility.

Patent subject matter eligibility jurisprudence under 35 U.S.C. §101 has been in flux in recent years, with decisions from the Supreme Court and Federal Circuit invalidating dozens of issued patents across varied industries, from banking to software development to pharmaceuticals and diagnostic methods. Are business methods and software still patentable? Are your issued patents still valid? Even if you do manage to get your application granted by the patent office, will a court just throw it out? This topic examines the history and development of patent eligibility jurisprudence from the 1850s to today, with an eye to understanding the underpinnings and goals of modern subject matter eligibility tests. The material also provides tips and strategies for application drafting and patent prosecution to obtain strong, valid patents; and conversely to identify issued patents that are vulnerable to invalidation. Identifying potentially invalid patents in their own portfolios may help companies avoid costly and unsuccessful litigation. Accused infringers will also be better able to negotiate settlements or avoid litigation once able to identify and articulate weaknesses in competitors' patents. This information is critical for patent prosecutors, litigators, and corporate IP counsel to obtain and enforce strong patent protection.

Faculty

Daniel Rose

Volpe & Koenig, P.C.