Eric Morehouse spoke at 139th INTA Annual Meeting in Barcelona, Spain

Mr. Morehouse spoke on Saturday, May 20, 2017 (1:30 pm – 2:45 pm) at the INTA Annual Meeting. His presentation was titled Cost-Effective Use of Patents: Protecting Inventions with Smaller Budgets, and is identified in the program brochure as CSA51. He covered the subject matter as it pertains to the United States and Canada.

“For small businesses (and startups in particular), funds for IP protection are limited, and in many cases, patents are not pursued because they are considered too expensive, particularly when compared with trademarks. Additionally, patent law is still strongly influenced by national laws and policies to stimulate innovation, resulting in a system that is far from harmonized. This can make it difficult for practitioners to appreciate what is possible in other countries and regions. After a short overview of the different possibilities, the speakers will discuss (i) how they deal with such clients and (ii) how to identify the options available in the main patenting countries for both domestic and foreign applicants.”

Mr. Morehouse is a partner with Kenealy Vaidya LLP (United States), and will be joined by Marieke Westgeest of Markenizer BV (The Netherlands), and Stephen Yang and Hui Wang both of Chofn Intellectual Property (China).

The USPTO Issued Guidance Procedures for Patentable Subject Matter Determinations

March 4, 2014

The USPTO today issued new procedures guiding patentable subject matter determinations under 35 U.S.C. §101. These procedures were issued to the Patent Examining Corps from Andrew H. Hirschfeld (Deputy Commissioner for Patent Examination Policy) in the form of a memo entitled “2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products.”

The memo provides a summary (with a flowchart) of the overall process for subject matter eligibility under §101, as well as a detailed explanation for determining whether a claim as a whole recites something “significantly different” than the judicial exceptions.  Examples are also provided in the following contexts:  A) composition/manufacture claim reciting a natural product; B) composition versus method claims, each reciting a natural product; C) manufacture claim reciting natural products; D) composition claim reciting natural products; E) composition versus method claims, each reciting two natural products: F) process claim involving a natural principle and reciting natural products; G) process claims involving a natural principle; and H) process claim reciting an abstract idea and a natural product