Learn essential patent information in an uncertain legal environment.
Patent subject matter eligibility under 35 U.S.C. §101 remains one of the most contentious and dynamic areas of patent law, especially in the realm of software and computer-implemented inventions. Although the fundamental two-step Alice/Mayo framework remains in place, Federal Circuit decisions and evolving USPTO guidance continue to reshape the boundaries of what is patentable.At the same time, §112 issues - particularly around written description and enablement - have become increasingly important in software claims, as courts scrutinize functional language and demand greater technical disclosure. Decisions like Williamson v. Citrix and its progeny have led to narrower interpretations of software claims and increased vulnerability to invalidity challenges.
This presentation will explore recent developments in both §§101 and 112, with an emphasis on practical strategies for drafting and prosecuting software patent applications. Attendees will gain insight into recent USPTO and Federal Circuit trends, best practices for overcoming common rejections, and how to future-proof applications against litigation risks.
Agenda
Patent Eligibility Under 35 U.S.C. §101: Current Landscape- Evolution of Subject Matter Eligibility Jurisprudence
- Impact of Alice, Mayo, and Key Federal Circuit Decisions
- USPTO Eligibility Framework and Examiner Guidance
- Trends in PTAB and District Court Outcomes
- Claim Drafting Strategies for Surviving §101 Rejections
- Written Description and Enablement: Evolving Standards
- Functional Claiming and the Role of Means-Plus-Function Limitations
- Post-Williamson Case Law and Its Ongoing Fallout
- USPTO Practice Tips and Examiner Expectations
- Drafting Techniques to Avoid Ambiguity and Narrow Interpretations
- Practical Claim Drafting Advice
- Lessons From Recent Office Actions, PTAB Decisions, and Case Law
- Building a Record for Appeal and Litigation
- Preparing for Further Judicial and Regulatory Shifts
Speaker(s)
Daniel RoseVolpe & Koenig, P.C.
- Partner with the law firm Pierson Ferdinand LLP and a member of the firm’s Cybersecurity and Blockchain and FinTech teams
- Practice emphasizes all aspects of IP counseling and patent prosecution particularly in software development, artificial intelligence and machine learning, networking and communications, cybersecurity and cryptocurrencies, media processing and encoding, and bioinformatics
- Conducts regular seminars and workshops on software patentability and patent drafting and prosecution
- Admitted in Massachusetts and before the United States Patent and Trademark Office
- J.D. Degree, intellectual property concentration, patent law specialization, magna cum laude, Suffolk University Law School
