USPTO Subject Matter Eligibility Guidelines: Drafting & Prosecuting U.S. Claims after Prometheus

The U.S. Supreme Court has traditionally considered the scope of patent eligible subject matter in the United States to be extremely broad. The Court’s unanimous decision in Mayo v. Prometheus in March 2012, was a clear departure from that traditional view. As a result, the U.S. Patent and Trademark Office (USPTO) has issued an interim procedure for the analysis of process claims that relate to so-called laws of nature. In spite of the USPTO’s guidance, uncertainties will remain regarding the eligibility of certain types of process claims until the Prometheus decision is further fleshed-out by the lower courts.

Please join our panel as they discuss the Supreme Court’s decision in Prometheus, the USPTO’s interim examination procedures for process claims under that decision, and the implications for U.S. patent practice, including:

• Subject matter eligibility in the United States after Mayo v. Prometheus

• The Supreme Court’s recent surge of interest in patent eligibility and its agreement to hear a further case on this issue: ACLU v. Myriad Genetics

• The USPTO interim procedure for implementing the Prometheus decision and its impact on drafting and prosecuting process claims

• Drafting claims in the medical diagnostics area under the new USPTO guidelines

• Strategies for handling uncertainties about patent eligibility under Prometheus

This webinar is the fourth in Finnegan’s 2012-2013 series, “Strategic U.S. Patent Series for European Counsel.” We hope you are able to attend.

Moderator:

Anthony C. Tridico, Ph.D.

Speakers:
Erika Harmon Arner
Elizabeth A. Doherty, Ph.D.

Date:
Wednesday, January 9, 2013

Time:
16:00 CET
10:00 EST