Past Webinars

  • Recorded Webinar from June 27, 2018
From Alice to Berkheimer: Practical Tips for Preparing Software Patent Applications

Please join Fitch, Even, Tabin & Flannery LLP and Wood IP LLC for a free webinar, “From Alice to Berkheimer: Practical Tips for Preparing Software Patent Applications,” on Wednesday, June 27, 2018, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12 noon EDT.

Changes in subject matter eligibility prompted by the Supreme Court’s decision in Alice v. CLS Bank have created no small measure of confusion and uncertainty, particularly in the area of software. Seemingly hundreds of related cases in the district courts, Federal Circuit, and USPTO have resulted—many ostensibly at odds with others. One of the latest Federal Circuit decisions, Berkheimer v. HP, may represent an especially important analytical milestone. Recent USPTO memos offer further helpful guideposts. During this webinar, our presenters will provide practice tips derived from some of these decisions and memos, principally from the software perspective.

Among other insights, our presenters will share the following:

  • How to quickly assess whether certain software programs might qualify as patent-eligible subject matter
  • Practical tips for preparing office action responses and drafting patent applications in view of the USPTO memo to examiners following Berkheimer
  • A simple checklist for inventors preparing software-related invention disclosures

Our speakers:

Wood IP managing partner Theodore A. Wood has over 35 years of electrical, electro-mechanical, communications, software, and computer security-related technical, legal, and military experience. He uses this experience to help companies protect and leverage their innovations and ensure marketplace exclusivity. Ted’s practice also includes inter partes reviews, reexaminations, and oral arguments before the Patent Trial and Appeal Board.

Wood IP partner Archie E. Williams, Jr. has over 40 years of patent preparation and prosecution experience, with a special focus on software patentability, subject matter eligibility, and USPTO rules. Archie leverages his insights in these areas to counsel clients on successfully navigating the obstacles to software patentability created by recent Supreme Court and Federal Circuit decisions. Archie is also a retired USPTO Supervisory Patent Examiner (SPE) and a former USPTO Special Laws Expert/Special Program Examiner (SPRE).

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