Patent Drafting for Patent-Eligibility (Following Alice, Enfish, and TLI Communications)

Practitioners’ continuing frustrations notwithstanding, recent cases have demonstrated that the metes and bounds of patent-eligibility under 35 U.S.C. § 101 are gaining in clarity.  Undeniably, much subjectivity and unpredictability remain.  Nonetheless, at the June 3, 2016, University of Dayton School of Law Program in Law and Technology (PILT) Seminar, I was able to present some concrete practice tips, particularly with respect to drafting patent applications that could face Section 101 rejections.  If you download the slides at the foregoing link and want to jump right to the practice tips, they start at slide 27.  If you don’t want to look at the slides, here is the (really, really) short version: draft to show you are presenting a technical solution to a technical problem.  That is certainly the takeaway from, and in my view the path to reconciling, the Federal Circuit’s recent decisions in TLI Communications LLC v. AV Automotive LLC and Enfish, LLC v. Microsoft Corp.

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