The USPTO is trying to put an end to the “I know it when I see it” era of subject-matter ineligibility decisions by patent examiners. This month the agency published a new package of guidance to examiners that includes, among other things, instructions on formulating detailed subject-matter eligibility rejections and responses to applicant’s replies, and a new set of life science examples.
Our webinar on Wednesday, May 18 will focus on the patent prosecution process and Section 101 rejections in light of the new guidance. The panel features the USPTO’s Deputy Commissioner of Patent Examination Policy. In discussion with two law firm patent prosecutors, he will explain the agency’s new policies and how the agency will encourage examiners to follow them. The panel will also review the recent Federal Circuit decision in Enfish v. Microsoft and other pending decisions that may cause the USPTO to further adjust its policies.
Another upcoming webinar (date to be announced shortly) will feature a USPTO life sciences expert who will hone in on the new life science examples in discussion with two life science patent prosecutors. Despite the welcome new insights provided to patent applicants by the latest USPTO examples, some experts point out that hard questions remain. For example, what is the likely eligibility of a claim directed to a mixture of an efficacious amount of a naturally-occurring product?
Speakers:
Robert Bahr, USPTO
Bart Eppenauer, Shook, Hardy & Bacon L.L.P.
Michelle Holoubek, Sterne Kessler Goldstein and Fox
