30 September 2020 // Subject Matter Eligibility

First broadcast on 30 September 2020

The first in FICPI's Connect, Share & Grow series of webinars

Sharon Crane and Swarup Kumar, chairs of the webinar series, introduce topics from FICPI’s Work and Study (CET) groups and the Professional Excellence Committee (PEC) that will be subject of future webinars in the series.  Sharon Crane (Chair of CET5 – Biotechnology and Pharmaceuticals) and Brett Slaney (Chair of CET6 – Software, High-Tech, and Computer Related Issues) will introduce the topic of subject matter eligibility, as well as the speakers:

MaryAnne Armstrong (US) of CET5 will discuss the U.S. Supreme Court decisions that have shaped the current challenges we face in defining what is, and what is not, patent eligible subject matter in the U.S.  Dr. Armstrong will also discuss the USPTO’s 101 examination guidelines and life sciences examples, the “two-step test” and what is trending in USPTO examination and Federal Circuit jurisprudence.

Serge Shahinian (CA) of CET5 will discuss the scope of patent eligible subject matter in Canada.  While therapeutic methods are not patentable in Canada, Dr. Shahinian will discuss alternative “use” and “product for use” formats, touching on hot topics such as claiming antibodies, stem cells, diagnostic methods and personalized medicine.  He will also discuss a significant recent court decision regarding the determination of “essential” claim elements in assessing patent eligibility.

Chad Billings (US) of CET6 will discuss U.S. Supreme Court jurisprudence and the USPTO 101 examination guidelines with a view to their effects on claiming high-tech inventions.  Mr. Billings will also discuss current efforts to amend 35 USC 101 to help clarify the metes and bounds of what is patent eligible subject matter in the US.

Johan Örtenblad (SE) of CET6 will discuss the framework for determining patent eligible subject matter in Europe, including established case law, recent case law, and updates on examination guidelines.  Mr. Örtenblad will also discuss G 1/19, a referral to the Enlarged Board of Appeals at the EPO relating to the patentability of computer-implemented simulations.