Recent Regulations on Patent Eligibility Under 35 USC 101 & 35 USC 112

Learn strategies for application drafting in view of avoiding rejections under the new guidance.

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. However, newly released guidance from the USPTO to Patent Examiners and the Patent Trial and Appeals Board provides some clarity and a path to patentability for these industries. This topic will examine the new guidance in depth and analyze some examples of ineligible and eligible claims, and provides tips and strategies for application drafting and patent prosecution to overcome eligibility rejections. The USPTO released new guidance for determining written description and enablement support under 35 U.S.C. §112 in view of the recent Federal Circuit decision in Williamson v. Citrix Online, LLC. The new guidance will affect large numbers of software-related patent applications and may cause structural claim limitations to be interpreted functionally, and narrowly. This information will examine this new guidance and the Williamson decision and their effect on software-related applications, provide tips and strategies for application drafting in view of avoiding rejections under the new guidance, and is critical for patent prosecutors, litigators, and corporate IP counsel to obtain and enforce strong patent protection.