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Patentable Subject Matter After Alice v. CLS Bank: How Courts and the USPTO Are Reacting

The Palo Alto Area Bar Association (PAABA) and the International Technology Law Association (ITechLaw) are teaming up to provide a luncheon panel discussion on the practical implications of the Alice v. CLS Bank decision.  In her dissent to the Federal Circuit Alice decision, Judge Moore predicted that the majority view would result in “the death of hundreds of thousands of patents.”  Since the U.S. Supreme Court affirmed that decision in June, it is now becoming clear that both courts and the US Patent and Trademark Office are treating the Alice decision as having changed the law on what types of inventions are eligible for patent protection.

The panel will explain this perceived change and offer practical suggestions for steering clients through these shifting seas, including:

  • How Alice has impacted patent applications at the USPTO, Covered Business Method post-grant proceedings at the PTAB, and invalidity arguments in district court
  • What the USPTO, district courts, and the Federal Circuit have done with the vague tests articulated by Alice regarding “abstract ideas” and “inventive concept”
  • What kinds of applications and patents are most vulnerable
  • What patent owners and applicants who are at risk can do to shore up their IP protection
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