This past May 2017, Staas & Halsey partners Richard A. Gollhofer and Mehdi Sheikerz and senior associate Stephen McClure presented “Drafting Patent Claims to Avoid 35 U.S.C. §101 Rejections” at the 3rd Annual IP Strategy Summit in Seattle, Washington on May 3, 2017. The presentation was part of the firm”™s ongoing efforts to inform Applicants about recent patent subject matter eligibility (SME) decisions by the courts and recent SME guidance developments at the U.S. Patent and Trademark Office (USPTO).
The presentation included a brief review of the Alice Corp. v. CLS Bank decision and eight subsequent Federal Circuit decisions that found patent eligibility through March 2017. This provided the background for a discussion of several hypothetical examples of possible claim amendments that may be deemed by USPTO examiners to comply with the current SME.