Newsletter Edition 47 - May 2023


USPTO attorneys discuss software and biotechnology patents

Under the theme “Patent Eligibility in the Software and Biotechnology Fields,” patent attorneys from the Office of Policy and International Affairs at the United States Patent and Trademark Office (USPTO), Gordon Klancknic and Hasan Ahmed, provided detailed insights in an international webinar hosted by ABPI on May 9th. They discussed the requirements of 35 USC 101, which regulates the American patent system, as well as judicial decisions, and case law, and commented on examples of patent eligibility and ineligibility. The attorneys’ highly technical presentations took place at ABPI’s headquarters in Rio de Janeiro, hosted by the association’s director, Rodrigo de Ouro Preto.

In his presentation on computer-related inventions, Klancknic highlighted the requirements of “Legal Categories” for patentability. Under the “Judicial Exceptions,” he discussed the eligibility or ineligibility of claims, such as “limitations indicative of integration into practical application.” Continuing the presentation, the attorney detailed two out of the 46 guidance examples from USPTO. One example focused on a machine for injection molding control, while the other addressed cattle management, with four claims each. In both examples, three claims were found to be eligible, while only one was deemed ineligible.

Ahmed also presented two instances from the USPTO’s list of patent claims, this time in the biotechnology field. One focused on kidney disease treatment, while the other explored a substance that reduces human reliance on insulin and is recommended for glycemic control. In both instances, three claims were considered eligible, while one was deemed ineligible.

A video is accessible on our website’s event page in the exclusive access area for members who could not attend the live session.

Please log in with your credentials to watch it.