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HTS: Advanced Science and Technology: Patent subject-matter eligibility after Mayo and Alice
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October 2017 HTS Advanced Science and Technology Subcommittee Webinar

When: Tuesday, October 17, 2017
12:00 pm - 1:00 pm Eastern
Where: Webinar
United States
Contact: Tanya Coogan

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High Tech Sector: Advanced Science and Technology Subcommittee Present - 
Patent subject-matter eligibility after Mayo and Alice

Tuesday, October 17, 2017
12:00 pm - 1:00 pm Eastern Time
11:00 am - 12:00 pm Central Time
10:00 am - 11:00 am Mountain Time
9:00 am - 10:00 am PacificTime


What kinds of things can you patent? Industrial robots?- probably. Accounting techniques?- probably not. DNA?- sometimes. Software?- anybody's guess. Join us for an overview of the rules governing whether you can patent your invention - and whether your existing patents will be tossed out at trial. We will also cover recent court decisions expanding the frontiers of this rapidly-changing area of the law.

2014 saw a major upheaval in what kinds of technologies you can patent. The Supreme Court's "Alice" decision that year radically changed the baseline requirements for almost any invention involving a computer. Alice built on 2012's "Mayo" decision that was similarly revolutionary in the biotech space. Alice and Mayo define “subject-matter eligibility” under 35 USC 101. If your patent claims do not recite eligible subject matter, they can be invalidated even if they are inventive over the prior art.

Since the Alice and Mayo decisions, patent applicants, the Patent Office, and even the courts themselves have been struggling to implement the new rules. In November 2016, for example, the “Amdocs” decision commented that “abstract idea,” one of the key terms at issue, does not have a “single, succinct, usable definition or test.” Without a definitions, each and every new court decision touching on subject-matter eligibility can become a new factor weighing for or against your position.

We will walk you through the maze of subject-matter eligibility based on our experience over the last five years. We will lay out the basic framework of Mayo and Alice. We will then build on that foundation an understanding of some of the key recent cases. We will also discuss examples of claims that have passed muster under section 101, ways of responding to section-101 rejections, and techniques for drafting the specifications and claims of new applications to strengthen your subject-matter eligibility position.

Learning Outcomes:

- Know the framework for subject-matter eligibility after Mayo and Alice
- Understand the challenges in applying the framework
- Understand holdings in recent cases that provide hope for patent applications
- Know how to strengthen your position while drafting and prosecuting patent applications


Christopher White
Patent Agent
Lee & Hayes, PLLC

Chris White manages U.S. and international patent portfolios and advises clients on IP strategies. He has extensive experience preparing and prosecuting applications in electronics and software, including flat-panel displays, electrophotographic and inkjet printers, and user interfaces for portable electronic devices. Chris is skilled in securing patent coverage in the U.S., Europe, and Japan. Additionally, he has considerable experience helping inventors and technical managers plan and develop patent portfolios that reduce competitors’ latitude to develop competing products.

Prior to joining Lee & Hayes, Chris worked at Eastman Kodak for over ten years in various capacities, including electronics engineering, intellectual property management, and most recently as a patent agent. He is a named inventor on 52 U.S. Patents. He was recognized as an Eastman Kodak Company Distinguished Inventor for his patents in organic LED (OLED) technology. 

Sally Teng
Lee & Hayes, PLLC

Sally Teng’s practice focuses on the preparation and prosecution of domestic and international patent applications in the biotechnology, pharmaceutical, chemical, and medical device areas. She has specific experience in recombinant DNA, transgenic animals and plants, chemicals, bone and tissue transplantation, therapeutic drugs, delivery of therapeutic agents, vaccines, diagnostic assays, and antibodies. Her practice includes handling patent disputes including reexamination proceedings before the United States Patent and Trademark Office and providing support for opposition proceedings before international patent offices.

Sally has represented a wide range of clients with the procurement of IP, including chemical, biotechnology and pharmaceutical companies, research institutions, universities and non-profit organizations. In addition, she has provided litigation support including technical analysis and discovery support, working with expert witnesses, analysis of validity and infringement issues and motion practice. Most recently, Sally was with an international law firm in Washington, D.C.

Prior to attending law school, Sally completed her Ph.D. in Chemistry from Yale. She conducted her doctoral research in biophysical chemistry, investigating the photochemistry of DNA and drug-DNA interaction. Sally completed a postdoctoral fellowship at Massachusetts General Hospital and Harvard Medical School in molecular neurobiology, characterizing Growth Associated Protein 43 (GAP-43) binding proteins. Prior to working as an attorney, Sally was a Patent Examiner with the USPTO in the Biotechnology Group.

Sally is fluent in Mandarin Chinese.

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