An Introduction to Patent Subject Matter Eligibility Following the Supreme Court’s Decision in Alice v. CLS Bank

$245.00

CLE credits earned: 4 GENERAL (or 4 LAW & LEGAL for WA state)

Attendees will gain valuable insights on navigation of patent subject matter issues in federal courts and the USPTO based on guidance provided by the Federal Circuit post-Alice v. CLS Bank. Key criteria for meeting the two-part patent subject eligibility at the first step as well as the second step will be explained. A list of best practices for addressing these issues will be provided.

This course is co-sponsored by the Federal Bar Association.

Key topics to be discussed:

•   Brief review of Alice Corp. v. CLS Bank
•   Guidance from recent opinions
•   Best practices for patent eligibility post-Alice Corp

Date / Time: October 2, 2019

•   2:00 pm – 6:15 pm Eastern
•   1:00 pm – 5:15 pm Central
•   12:00 pm – 4:15 pm Mountain
•   11:00 am – 3:15 pm Pacific

Choose a format:

•   Live Video Broadcast/Re-Broadcast: Watch Program “live” in real-time, must sign-in and watch program on date and time set above. May ask questions during presentation via chat box. Qualifies for “live” CLE credit.
•   On-Demand Video: Access CLE 24/7 via on-demand library and watch program anytime. Qualifies for self-study CLE credit. On-demand versions are made available 7 business days after the original recording date and are view-able for up to one year.

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Original Broadcast Date: August 26, 2019

Timothy J. Maier, Esq. is a registered Patent Attorney and practices all aspects of Intellectual Property Law. Mr. Maier’s practice includes patent preparation and prosecution; patent and trademark litigation; PTAB litigation, design patents, trademark oppositions, patent reissue and reexamination proceedings; strategic domestic and international patent and trademark portfolio development and management; patentability, validity, invalidity, infringement, freedom to operate, design around opinions and counseling, patent portfolio landscape analysis and due diligence opinions. Mr. Maier’s technical expertise includes various aspects of electrical engineering, electro-mechanical, mechanical, industrial, wireless technology, software enabled systems, financial systems and telecommunication engineering. Mr. Maier has serviced clients in highly competitive technical areas, including, wearable technology, autonomous vehicle technology, medical devices, RFID technology, financial products, telecommunications, consumer electronics, cosmetic devices, packaging, semiconductors, e-commerce software, optics, and business methods.

Mr. Maier’s experience and expertise most recently has focused on providing a range of patent services to clients and developing patent strategies that complement the client’s business objectives. In particular, he enjoys developing and managing patent portfolios for the world market, for both start-up, middle market and Fortune 500 companies. To this end, he also analyzes competitors’ patent portfolios and products to counsel clients regarding enhancement and enforcement of their patent portfolio, potential investment of contemplated products, strategic design-around, and acquisition of technology.

Prior to founding Maier & Maier PLLC , Mr. Maier was formerly an attorney with Oblon, McClelland, Maier & Neustadt P.C.

Mr. Maier received his Bachelor of Science from Vanderbilt University and Masters in Telecommunications Engineering from George Mason University School of Engineering and his Law degree from George Mason University School of Law. Mr. Maier completed the Intellectual Property Law sequence while attending George Mason University School of Law, an intense concentration in intellectual property law.

Mr. Maier is licensed to practice before the United States Patent Office, Supreme Court of Virginia, Eastern District Court of Virginia, and the Court of Appeals for the 4th Circuit. He is a member of the Virginia State Bar (VSB), District of Columbia Bar American Bar Association (ABA Patents, Trademarks and Copyright Divisions), Licensing Executives Society (LES), Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI, published articles) and American Intellectual Property Association (AIPLA, elected to two year committee term).

Currently Mr. Maier is a faculty member with Patent Resource Group, providing lectures around the United States to broad audiences on patent prosecution and enforcement in Asian countries, including Japan, Korea and China. and is an author for www.postgrant.com , a leading intellectual property law blog.


Stephen Kunin, Esq. is a Partner at Maier & Maier PLLC, where he specializes in all areas of patent practice. His expertise includes post-issuance proceedings at the United States Patent Office, opinions of counsel, advising attorneys and our clients on complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure, for which he is highly sought after for expert testimony. Mr. Kunin has presented expert testimony covering numerous subjects. In addition to serving as an expert witness, Mr. Kunin has vast experience in providing lectures on recent US patent law developments across the USA, Europe and the Far East. He has more than 48 years of experience in the patent profession.

After graduating from Washington University (MO) with a Bachelor’s in Science in Electrical Engineering with honors in 1970, Mr. Kunin embarked on his lengthy career over nearly 35 years at the United States Patent Office. He received his JD in law degree with honors in 1975 from The National Law Center at George Washington University. He held many significant positions with the USPTO, which culminated with ten years of service as the Deputy Commissioner for Patent Examination Policy from 1994-2004. While at the USPTO, he was a leading voice in forming patent policy, in revising examination guidelines on subject matter eligibility, utility, non-obviousness and written description, and in establishing reissue and reexamination procedures. Mr. Kunin spearheaded revisions to the Rules of Practice and Manual of Patent Examining Procedure, making key changes to chapters on ex parte reexamination, reissue, and inter partes reexamination.

Since leaving the PTO, Mr. Kunin has been a practicing patent attorney for more than 14 years counseling clients in post-grant patent proceedings at the USPTO and routinely serves as an expert witness in patent litigation cases. He is a registered patent attorney with the USPTO, and admitted to practice in the Commonwealth of Virginia, before the U.S. Court of Appeals for the Federal Circuit, and before the United States Supreme Court. From 2005 through 2017, Mr. Kunin served as the Intellectual Property Program Director at the Antonin Scalia School of Law at George Mason University, while teaching patent and intellectual property law classes as an adjunct professor of law.

Over the course of his illustrious career, Mr. Kunin has received many notable awards, including the Meritorious Executive Presidential Rank Award, The Vice President’s Reinventing Government Hammer Award , four Gold Medals, three Silver Medals, and one Bronze Medal from the Department of Commerce, and a Career Achievement Award from the USPTO. He was named one of Intellectual Property Today’s most influential people in IP law, in May of 2018 he was named one of Managing Intellectual Property’s “IP stars,” and he was also recognized by IAM Patent 1000 in the field of Patent Law.

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Section I. A review of the 35 U.S.C § 101

Section II. History of Supreme Court decisions on patent subject matter eligibility

Section III. Focus on Federal Circuit decisions post-Alice defining the contours for satisfying the two-part Alice test

Section IV. Practice Tips for preparing and prosecuting U.S. patent applications at the USPTO to address the challenges presented by patent subject matter eligibility during patent prosecution as well as guidance for patent litigators who are challenging patents or defending patents in federal district court, the ITC or at the PTAB in CBM or PGR proceedings