Contra Costa County Bar association 

 

Intellectual Property Section is sponsoring:

Current Law of Patent Eligible Subject Matter, Obviousness, and Obviousness-type Double Patenting

Tuesday, April 17, 12:00 pm – 1:15 pm

Event provided by CCCBA

 

      

 

Speaker

Dr. D. Benjamin Borson—Borson Law Group, PC

 

This presentation focuses upon the current law of patent eligible subject matter under 35 U.S.C. §101, obviousness under 35 U.S.C. §103 and obviousness-type double patenting (ODP).  The standards claim rejections under these principles are often uncertain, especially for patent eligibility.  The Supreme Court’s decisions in Mayo v. Prometheus, and Alice v. CLS Bank have upheld rejections for natural law (Mayo) and for abstractness (Alice), and set forth a two-step process for identifying patent ineligible subject matter.  The Court of Appeals for the Federal Circuit (Fed. Cir.), USPTO Examiners, and the PTAB (especially Inter Partes Reviews (IPRs)) have reached inconsistent conclusions, with practitioners still lacking clear understanding of the law of eligibility.  Since the Supreme Court’s decision regarding §103 in KSR v. Teleflex, there have been recent decisions by the Fed. Cir., clarifying the law (e.g., In re Nuvasive, In re VanOs, and In Re Stepan Co).  In these cases the Fed. Cir. held that a valid prima facie case of obviousness requires a clear, scientifically and factually based explanation of why a person of skill would combine or modify references to arrive at the invention as claimed. Because these cases are recent (2017), and have not been part of examination guidelines, some Examiners still rely upon a conclusory justification for rejections based on whether a person could modify or combine. Standards for ODP are also uncertain, as some Examiners apparently apply the rationale of §103, but not focusing upon the claims of the reference patent or application.

 

Biography

 

            Ben Borson earned his B.A. in biology from San Francisco State College, his M.A. in biology from UC Riverside, his Ph.D. in physiology from UCSF, and his J.D. from University of San Francisco.  After 20 years as a research scientist and faculty member at USCF, he attended law school, after which he joined the IP boutique firm of Fliesler, Dubb, Meyer and Lovejoy, and after 9 years, founded the Borson Law Group, where he advises clients in the US and in foreign countries in life science and high technology IP matters.  He is an active member of the CCCBA, being past president of the Business Law and member of the IP Section, is active in the IP Law Section of the California State Bar, the AIPLA, and is a past member of the USPTO Patent Public Advisory Committee.   He is an active presenter and author on IP topics.

 

 The Contra Costa County Bar Association certifies that this activity has been approved for 1 hour of General MCLE credit by the State of California, Provider #393.

 

 

MCLE Credits

General

1 hr

 

Cost

Members: When you register, we’ll calculate the best price based on your membership level and section membership. Not a member? Join today to take advantage of discounted pricing on all CCCBA events.

 

	Full Price	Early Bird Price
Section Member Special Pricing
Intellectual Property Section	$15.00	—
Members	$20.00	—
Non-Members	$25.00	—

 

Location

Kilpatrick Townsend & Stockton LLP
2175 North California, Suite 600
Walnut Creek CA 94596