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Follow on Google News | Robert R. Sachs, Partner, Fenwick & West LLP to Speak at KC’s EventFor further details, please visit: https://theknowledgegroup.org/ About Robert R. Sachs Robert Sachs concentrates his practice on strategic patent counseling and prosecution for software technologies. Bob has extensive experience in developing patent portfolios for companies of all sizes, from startups to multi-nationals. He is the primary evaluator for standards essential patents on today’s most important audio, video, and communications technologies, including 3GPP-LTE, IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, AMR-NB, AMR-WB, AMR-WB+, G.711, G.729, AGORA-C, and NFC-IP. He conducts and supervises patent evaluations in US, as well as Europe, Japan, China, South Korea, Mexico and Canada. One of Bob’s areas of expertise is patentable subject matter: the question of what kinds of inventions are eligible for patent protection, and particularly whether software and life sciences related inventions are patentable. This issue has become the new battleground in the development of the patent law, with several important cases having been recently decided by the Supreme Court and the Court of Appeals for the Federal Circuit. While most authors and scholars take a results-oriented approach to this question, Bob instead starts with the first principles of creativity and innovation that drive humans to solve functional problems. From that understanding, software and life sciences inventions are squarely in the domain of what the patent law is designed to protect. Follow Bob’s commentary on patent eligibility and related patent issues on Bilski Blog (http://www.bilskiblog.com/ About Fenwick & West LLP Fenwick & West provides comprehensive legal services to ground-breaking technology and life sciences companies at every stage of their lifecycle. We craft innovative, cost-effective and practical solutions for established and emerging companies on issues ranging from venture capital, public offerings, M&A and strategic relationships, to intellectual property, litigation and dispute resolution, taxation, antitrust, and employment and labor law. For more than four decades, Fenwick has helped some of the world’s most recognized companies become and remain market leaders. For information, visit www.fenwick.com. Event Synopsis: On July 30, 2015, the United States Patent and Trademark Office (USPTO) has issued additional guidelines in determining Subject Matter Eligibility under 35 U.S.C. § 101. These guidelines conform to the public comments provided in response to the Interim Patent Eligibility Guidance released by the USPTO in December 2014. The various themes of the comments include requests for additional examples of claims directed to abstract ideas and laws of nature; explanation of the markedly different characteristics (MDC) analysis; and clarification of the requirements of a prima facie case of unpatentability under § 101 and the role of evidence in subject matter rejections. The newest updates focus on analysis of abstract ideas, particularly in the business method, Graphical User Interface, and software areas. It also provides additional examples of subject matter eligible claims in various technologies as well as sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim is subject matter eligible. These examples are deem equally valuable to USPTO examiners and applicants by giving both parties cleaner roadmap on the proper analysis for determining patent eligible subject matter. Both the December 2014 Interim Guidance and the July 2015 Update have shown USPTO’s extended efforts to develop and implement policy regarding the judicially recognized patent ineligible exceptions. The significant changes in how the office examines patent applications since the Supreme Court’s decisions in Alice Corp v. CLS Bank and Mayo v. Prometheus serve as the turning points in the conventional wisdom of subject matter eligibility. Unfortunately, the July 2015 Guidance was viewed with obscurity concerning the requirements for establishing a sufficient prima facie case of subject matter ineligibility. It appears to indicate that an examiner can take official notice as to whether additional elements in the claim amount to significantly more than the judicial exception by noting that “a rejection should only be made if an examiner relying on his or her expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more.” In this two-hour LIVE Webcast, the Knowledge Group has assembled a panel of key thought leaders and practitioners to help examine the USPTO’s July 2015 Interim Guidance. The panel will also highlight the implications of the Guidance on patent eligibility and will provide practical advice and best strategies for drafting claims and writing applications under this latest Guidance. Some of the major topics that will be covered in this course are: § Subject Matter Eligibility: § 2014 Interim Patent Eligibility Guidance § July 2015 New Guidance: Practical Implications and Best Practices § Prima Facie Case § Recent Decisions § Alice Corp v. CLS Bank § Mayo v. Prometheus § Patent Eligibility: § Possible Outcomes and Changes About The Knowledge Group/The Knowledge Congress Live Webcast Series The Knowledge Group was established with the mission to produce unbiased, objective, and educational live webinars that examine industry trends and regulatory changes from a variety of different perspectives. The goal is to deliver a unique multilevel analysis of an important issue affecting business in a highly focused format. To contact or register to an event, please visit: http://theknowledgegroup.org End
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