TOPIC: Patent 101

When: May 17, 2023 | 9:00 am – 2:00 pm

In person, lunch provided at no charge | Seattle, WA (Eastlake)*

*Virtual attendance available

Are you an inventor or researcher in the life sciences or medical device space looking to learn more about intellectual property issues? Life Science Washington Institute invites you to participate in the next Intellectual Property Symposium on May 17. This free half-day conference offers an in-depth examination of IP strategy, focusing on its consequences for new businesses, developing industries, and established corporations.

We will explore the many facets of patentability throughout this symposium, illuminating the particular elements of your innovation that might or might not qualify for patent protection. Understanding the “Subject Matter Eligibility Test” assumes utmost importance given the rising incidence of AI and DNA sequencing in contemporary technologies. Recognizing and considering the ethical issues related to patenting is equally essential.

You will understand the essential ideas supporting the creation of a strong patent portfolio by attending this symposium. Engaging with our knowledgeable presenters and exploring these important subjects will give you the information and understanding you need to negotiate the intricate world of intellectual property successfully.

 

Schedule:

8:45 am             Registration opens

9:00 am            Professional Responsibility and Practice Before the USPTO – Dahlia George, Staff Attorney, USPTO of Enrollment and Discipline

10:00 am        Patents 101: Managing Intellectual Property: Strategies for Global Protection to Maximize Competitive Advantage, presented by April Abele Isaacson, Patrick Njeim, Andrew Serafini

11:00 am           Break

 11:05 am            Women in IP Podcast and lunch served

 11:30 am            USPTO updates 35 U.S.C. 101 – Subject matter eligibility – Carolyn Kosowski, USPTO

 12:30 pm           “HOT TOPICS Patents 101: IP Strategies, Subject Matter Eligibility, AI, and Ethics” (panel discussion) Moderator: Andrew Serafini, Speakers: April Isaacson, Carolyn Kosowski, Patrick Njeim

1:30 pm               Adjourn/Networking 

2:00                      Event wrap-up

 

*MCLE credit approval is pending. Kilpatrick Townsend & Stockton LLP will apply for CLE credit when eligible in Georgia, California, Colorado, Illinois, New York, North Carolina, Texas, Virginia, and Washington. For states not listed, a Certificate of Attendance that lawyers may use to claim the credit based on reciprocity or self-apply for credit will be provided. Credit generally is submitted and/or certificates issued within 30 days of the course or post-program approval. Please note approval can take up to 90 days. IN PERSON ATTENDEES ONLY RECEIVE CREDIT.

Program Abstract

This program will explore US Patent Law jurisprudence regarding subject matter eligibility under Section 101 (e.g., is your invention eligible for patenting). The panel will consist of experts from the US Patent and Trademark Office (USPTO) and practitioners, providing diverse perspectives.

The seminar will delve into recent developments and landmark cases in patent law.* The panel will analyze how these cases have shaped the interpretation and application of Section 101, particularly for software, biotechnology, and device patents.

The seminar will also explore USPTO subject matter eligibility guidance, including the USPTO Report on Patent Eligibility (2022) and the impact of recent Congressional legislative proposals on Section 101 jurisprudence. The panel will discuss these proposals’ potential benefits and drawbacks and how they may affect patent litigation and innovation.

Throughout the seminar, there will be a focus on practical implications for patent practitioners and patent applicants. Attendees will gain a comprehensive understanding of current issues in subject matter eligibility and how to navigate these complex and evolving legal standards.

 

Kilpatrick Townsend & Stockton LLP participants: April Abele Isaacson, MS, Patrick M. Njeim, MS, and Andrew T. Serafini, PhD

 

*The cases to be discussed include:

  1. Alice Corp. v. CLS Bank International (related to a computerized trading platform to reduce risk in a financial transaction; The Supreme Court held the patent invalid for being directed to an Abstract Idea and defined the foundational test for such determinations),
  2. Mayo Collaborative Services v. Prometheus Laboratories (related to optimizing the dosage of a drug used to treat autoimmune disease. The Supreme Court held the patent invalid for being directed to a natural law or phenomenon and did not have enough inventive concepts to transform the idea into patentable subject matter),
  3. Association for Molecular Pathology v. Myriad Genetics (related to isolated DNA sequences associated with an increased risk of breast and ovarian cancer. The Supreme Court held the patent invalid for being directed to a product of nature but found that cDNA is patentable),
  4. American Axle & Manufacturing v. Neapco Holdings (related to manufacturing driveline propeller shafts for vehicles that reduced vibrations during use. The Federal Circuit held that the patent is invalid for being directed to a law of nature),
  5. Cooperative Ent’mt, Inc. v. Kollective Tech (related to delivering video content over a network that reduced buffering and improved the viewing experience. The Federal Circuit held the patent invalid for being directed to an abstract idea under the Alice Corp test), and
  6. Illumina v. Ariosa (related to cell-free fetal DNA (cffDNA) in prenatal testing for genetic disorders. The Federal Circuit held the patent invalid for being directed to a natural phenomenon, the presence of cffDNA in maternal blood, and did not have enough inventive concepts to transform the idea into patentable subject matter).

Sponsored by:

Please register here to attend this free workshop*:

*For virtual attendance, please register HERE

Speaker Bios: 

Andrew T. Serafini is a registered patent lawyer who focuses his practice on strategic and comprehensive intellectual property counseling and management for biotechnology, biopharmaceutical, and other life sciences clients. Dr. Serafini is listed as a leading lawyer in the 2021 edition of Chambers USA: America’s Leading Lawyers for Business in Intellectual Property. IP STARS recognized him in 2020 and 2021 as a “Patent Star” in Washington and nationally. He was also recognized as a top patent practitioner in 2021 and the six years immediately preceding by IAM Patent 1000 – The World’s Leading Patent Practitioners.

As a scientist, Dr. Serafini enjoys the pursuit of innovation in his scientific research – as a lawyer, he uses his scientific background to strengthen his clients’ positions. He assists his clients in obtaining, protecting, and enforcing their intellectual property rights, especially in the areas of immunology, molecular biology, chemistry, antibody engineering and therapeutics, vaccines, stem cell technologies, molecular genetics, genomics, proteomics, and much more.

Dr. Serafini has focused on strategic and comprehensive intellectual property counseling and management for biotechnology, biopharmaceutical, and other diverse life sciences clients in over twenty years of practice. He fully engages with his clients, so he knows his clients’ wants and needs and how to best realize his clients’ goals given the pressures of business, the innovations of science, and the connections of the global community.

 

Patrick Njeim focuses his practice on patent preparation and prosecution, due diligence matters, infringement and validity opinions, portfolio analysis, patent litigation, and post-grant proceedings. He represents clients in a wide range of technology areas, including artificial intelligence, virtual reality, augmented reality, computer software and hardware, virtualization and cloud computing, networking, wireless communications, electrical engineering, mechanical engineering, medical devices, and various related technologies.

Prior to joining the firm, Mr. Njeim worked as an associate in the Seattle office of a national law firm. Previously, he worked for Boeing Commercial Airplanes for six years where he developed broad experience in systems engineering. In his most recent position with Boeing as Customer Engineer, Mr. Njeim managed airline accounts in Europe and Africa where he was responsible for negotiating, configuring, designing, and documenting airplane features, technologies, and systems specific to each airline.

As an Adjunct Professor of Law at the University of Washington (UW) School of Law, Mr. Njeim teaches advanced courses in intellectual property. He also advises and mentors law students participating in independent study programs and law clinics, including the UW School of Law Entrepreneurial Law Clinic.

 

April Abele Isaacson has 25 years of experience as a trial lawyer and registered United States patent attorney. Ms. Isaacson has significant trial experience in biopharma and chemical patent litigation—particularly Hatch-Waxman cases. She also spent nearly five years in-house at a pharmaceutical company where she provided intellectual property and regulatory strategic counseling during all stages of product development and managed numerous Hatch-Waxman litigations. Ms. Isaacson received her J.D. from Vanderbilt University, her M.S. in pharmacological and physiological sciences from the University of Chicago, and her A.B. in biological sciences from Mount Holyoke College, and is a decorated US Navy veteran (JAG Corps).

 

Carolyn Kosowski is a Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.  In this position, she assists in the drafting of rule packages, memoranda, and associated guidance to implement USPTO initiatives and comply with developments in patent law including subject matter eligibility, designs and 35 USC 112.  Prior to joining the Office of Patent Legal Administration, she was a primary patent examiner and examined patent applications related to network security and business method technologies.  Previously, she worked as a patent agent and attorney for a large general practice law firm in Washington, DC.  Carolyn received her B.S. in Systems Engineering from the University of Virginia and her J.D. from the George Washington University Law School.

 

Dahlia George first joined the U.S. Patent and Trademark Office (USPTO) in January 2005 as a Trademark Examining Attorney.  In January 2008, she joined the USPTO Office of General Law where she investigated and prosecuted EEOC complaints, grievances, and Merit Systems Protection Bureau appeals. She also responded to subpoenas for Government witnesses and documents, investigated Federal Tort Claims Act claims and IG inquiries, and handled Reasonable Accommodation requests for legal sufficiency.  In addition, she was the USPTO FOIA Officer.  Since January 2011 to the present, she joined the USPTO Office of Enrollment and Discipline where she investigates grievances and complaints alleging misconduct by patent and trademark practitioners; conducts moral character and “fitness to practice” applications for individuals seeking registration before the USPTO; and heads the Diversion Pilot Program for impaired practitioners.

Before working at the USPTO, Ms. George was an Assistant Attorney General for the N.H. Office of Attorney General where she investigated and prosecuted professional misconduct cases against licensed professionals such as physicians, psychiatrists, psychologists, and social workers, before their respective licensing boards.

Prior to her stint as a N.H. Assistant Attorney General, she served a tour of duty as a Judge Advocate General (JAG) in the United States Air Force where she served as a prosecutor for the United States in courts-martial and administrative discharge proceedings; handled procurement and claims matters; and advised base and wing commanders on the legality of base activities such as bingo night and mess activities.  Later she was promoted to the position of Area Defense Counsel for three bases covering 15,000 military and civilian personnel, where she represented military personnel in courts-martial (felony trials) and discharge proceedings.

She has an LLM in Intellectual Property and is licensed to practice law in the District of Columbia.

 

 

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Thank you for joining us May 17th, 2022 for:

Current Perspectives Around the Convergence of Life Science and IT

2022 World IP Day details

 

 

 

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Thank you for joining us for 2021 World IP Day! In case you missed the event, you can find the recording here:

https://vimeo.com/541868684

Thank you to our 2021 sponsors for their generosity in making this event possible: