The Innovation Firm

When

June 8, 2017

WEBCAST RECORDING: Is Your Software Patent-Eligible?

Is your Software Patent-Eligible?

 

Presenters Joshua Matloff and Benjamin Sparrow unpacked the Alice decision, recent related cases and USPTO guidelines, and the best strategies to protect software and business methods.

Since the Alice v. CLS Bank decision in June 2014, the standards for patent eligible subject matter for business method and software inventions have changed, with a slew of recent Federal Circuit decisions and amended guidelines on patentability from the USPTO. The USPTO will continue to vigorously apply Alice and reject certain software applications if they are directed to an abstract idea and other criteria relevant to patentability.  Applicants need to implement new strategies, in both the application drafting and prosecution stages, to avoid or overcome these rejections. 

Gain insight into:

  • Insights from several recent Federal Circuit decisions. 
  • USPTO Guidance on 35 U.S.C. §101.
  • Strategies for successful application drafting and prosecution.
  • Workshop with example claims and discussion of amendments to advance prosecution.

 

 

 

 

Mary Lou Wakimura

Josh Matloff
Associate at Hamilton, Brook, Smith & Reynolds, P.C.

Joshua practices in the areas of computer systems, software, electronics, optics, telecommunications, and mechanical devices/systems. Josh has experience with U.S. and international clients of all sizes in his patent prosecution practice. He has performed strategic intellectual property planning, including freedom to operate and due diligence analyses. He works on patent applications in a variety of software areas, such as speech recognition, natural language understanding, databases, ticketing systems, social networking, video compression, and storage backup systems.

  More...

 

Keith Wood

Ben Sparrow
Associate at Hamilton, Brook, Smith & Reynolds, P.C.

Benjamin’s practice focuses on patent prosecution, reexamination, and litigation.  He assists clients in obtaining patents through initiatives offered by the U.S. Patent and Trademark Office, including the First-Action Interview Pilot Program and After Final Consideration Pilot.  Ben is experienced in trademark prosecution, and has conducted educational seminars on patent reexamination in both ex parte and inter partes review.  More...

Overview

When

June 8, 2017

Is your Software Patent-Eligible?

 

Presenters Joshua Matloff and Benjamin Sparrow unpacked the Alice decision, recent related cases and USPTO guidelines, and the best strategies to protect software and business methods.

Since the Alice v. CLS Bank decision in June 2014, the standards for patent eligible subject matter for business method and software inventions have changed, with a slew of recent Federal Circuit decisions and amended guidelines on patentability from the USPTO. The USPTO will continue to vigorously apply Alice and reject certain software applications if they are directed to an abstract idea and other criteria relevant to patentability.  Applicants need to implement new strategies, in both the application drafting and prosecution stages, to avoid or overcome these rejections. 

Gain insight into:

  • Insights from several recent Federal Circuit decisions. 
  • USPTO Guidance on 35 U.S.C. §101.
  • Strategies for successful application drafting and prosecution.
  • Workshop with example claims and discussion of amendments to advance prosecution.

 

 
Presenter Bios

 

 

Mary Lou Wakimura

Josh Matloff
Associate at Hamilton, Brook, Smith & Reynolds, P.C.

Joshua practices in the areas of computer systems, software, electronics, optics, telecommunications, and mechanical devices/systems. Josh has experience with U.S. and international clients of all sizes in his patent prosecution practice. He has performed strategic intellectual property planning, including freedom to operate and due diligence analyses. He works on patent applications in a variety of software areas, such as speech recognition, natural language understanding, databases, ticketing systems, social networking, video compression, and storage backup systems.

  More...

 

Keith Wood

Ben Sparrow
Associate at Hamilton, Brook, Smith & Reynolds, P.C.

Benjamin’s practice focuses on patent prosecution, reexamination, and litigation.  He assists clients in obtaining patents through initiatives offered by the U.S. Patent and Trademark Office, including the First-Action Interview Pilot Program and After Final Consideration Pilot.  Ben is experienced in trademark prosecution, and has conducted educational seminars on patent reexamination in both ex parte and inter partes review.  More...

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