Patent Eligibility for Software-Based Inventions, Including Drafting Tips from Recent Fed. Circ. Patent Eligibility Rulings
Eric L. Sophir
Foley & Lardner LLP
Eric Sophir is an intellectual property partner with Foley & Lardner LLP. Eric counsels clients on protecting innovations, gaining market share, the risks and value associated with acquiring, licensing or otherwise commercializing a patent portfolio, resolving patent disputes and monetizing patents.
R. Evan Glass
Foley & Lardner LLP
Evan Glass is an associate and intellectual property lawyer with Foley & Lardner LLP. Evan counsels clients in intellectual property matters, with an emphasis on patents.
On-Demand:December 20, 2022
$95.001 hour CLE
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Since the Supreme Court’s decision in Alice v. CLS Bank, patent subject matter eligibility law has evolved in the courts and at the US Patent & Trademark Office. In this practical webinar, we will explore the current state of patent subject matter eligibility law including a discussion of some noteworthy recent Federal Circuit cases, guidance by the US Patent & Trademark Office, and proposed legislation to address patent eligibility concerns. The program will provide practical tips for illustrating potential new avenues to withstand eligible subject matter challenges in court, drafting applications to overcome patent eligibility hurdles, and the effects of the proposed legislation.
Key topics to be discussed:
Current state of subject matter eligibility law
Recent subject matter eligibility cases
Patent Office guidance
The Patent Eligibility Restoration Act of 2022
Date: December 20, 2022
Eric L. Sophir | Foley & Lardner LLP
Eric Sophir is an intellectual property partner with Foley & Lardner LLP. Eric counsels clients on protecting innovations, gaining market share, the risks and value associated with acquiring, licensing or otherwise commercializing a patent portfolio, resolving patent disputes and monetizing patents. His practice includes patent preparation and prosecution; infringement and validity analysis in patent litigation; licensing and selling; due diligence; clearance and landscape analysis; and post-grant proceedings. He also provides advice on prosecution strategies to better protect a product or more effectively deter competitors. His practice has a particular emphasis on portfolio development, including invention harvesting and patent filing strategies. Eric’s clients range from startups to Fortune 50 companies.
Eric has litigation experience and has worked in complex patent disputes at the federal district courts and Federal Circuit, arbitration and re-examination proceedings. He has also conducted analyses and prepared opinions regarding patent infringement, invalidity and enforceability. Eric’s practice also includes counseling clients in offensive and defensive actions involving competitors as well as non-practicing entities (NPEs).
Earlier in his career, Eric was an extern for Judge Randall Rader (ret), former chief judge of the U.S. Court of Appeals for the Federal Circuit. During law school, Eric was a senior editor for IDEA: The Journal of Law and Technology. He also received the highest grade in his “Trademark and Unfair Competition Law” class and later served as a teaching assistant.
While studying engineering at Cornell University, Eric conducted research for Professor L. F. Eastman regarding the growth and use of gallium nitride, a III-V semiconductor. One aspect of the research was attempting to grow a semiconductor that would emit a wavelength suitable for blue light.
R. Evan Glass | Foley & Lardner LLP
Evan Glass is an associate and intellectual property lawyer with Foley & Lardner LLP. Evan counsels clients in intellectual property matters, with an emphasis on patents. His experience includes patent preparation and prosecution, product clearance, due diligence, and infringement and validity analysis. He is a member of the Electronics Practice.
Prior to joining Foley, Evan worked as a summer associate at an IP boutique in Indianapolis.
Evan provides patent counsel in a broad range of technologies related to artificial intelligence, machine learning, data storage and database management, gaming systems, software algorithms and applications, virtualization technologies, blockchain integration, Internet services, Internet of Things (IoT), electromechanical control systems, 5G communications networks, and energy systems. In doing so, Evan services a broad range of clients ranging from emerging start-ups to Fortune 500 companies.
Evan has counseled clients with an emphasis on machine learning and artificial intelligence techniques in a variety of different technologies. In providing counsel, Evan has counseled clients regarding obtaining patents for different machine learning training methods, for improvements to existing machine learning techniques, and for different machine learning algorithm use cases. Examples of areas in which Evan has obtained protection over the use of artificial intelligence and machine learning include clinical data analysis, financial technology, network performance improvements, image analysis and improvement, chatbots, and building and energy automation systems.
I. Current state of subject matter eligibility law | 12:00pm – 12:10pm
II. Recent subject matter eligibility cases | 12:10pm – 12:20pm
III. Patent Office guidance | 12:20pm – 12:35pm
IV. The Patent Eligibility Restoration Act of 2022 | 12:35pm – 12:50pm