The document summarizes discussions from the March 2014 Patent Prosecution Luncheon. Key points include: - The White House is taking executive actions on patent reform, including requiring accurate ownership records and increasing scrutiny of functional claims. - The Federal Circuit upheld its standard of de novo review for claim construction. - New examination guidelines have been issued based on the Myriad decision regarding patent eligibility of natural products, but previous guidance on abstract ideas remains.

1. Patent Prosecution Luncheon
March 2014

2. White House Patent Reform: Executive Actions
• Draft rule to ensure patent owners accurately
record and regularly update ownership
information – limit shell company use
• Increase scrutiny on function claims –
glossary pilot program
• Online toolkit to help downstream users with
common litigation questions
• Expand outreach (Edison Scholars)

3. White House Patent Reform: Executive Actions
• Crowdsourcing prior art – including increased
use of 3rd party submission program
• Examiner training – Call for “innovators” to
volunteer
• Expanding Pro Bono program for inventors

4. Business and Ownership issues
• Sale of business – Owner may lose ability to
claim privilege regarding pre-sale
communications
– Great Hill Equity Partners v. Sig Growth Equity
Fund, LLP (C.A. No. 7906 (Nov. 15, 2013)
• Divorce – Spouse might retain rights in
invention, despite assignment by other spouse
– Be careful in “community property” states
– Hricik article, Enovsys LLC v. Nextel Com., Inc.,
614 F.3d 1333 (Fed. Cir. 2010).

5. De Novo Review of Claim Construction Upheld
• Lighting Ballast Control LLC v. Philips Electronics N.A.
Corp. (Fed. Cir. 2014) (En banc)
• No reason to change, majority (Newman)
opinion based on stare decisis:
– Newman: Promotes national uniformity, finality
• Concurrance by Lourie, additional reasoning:
– Claim construction does not involve assessing
historical facts
– Federal Circuit will not ignore district court

6. De Novo Review of Claim Construction Upheld
• O’Malley Dissent
– Agrees Judge should decide claim construction,
but says it involves questions of fact, so
deference should be shown

7. New Examination Guidelines Re Section 101
• Based on Myriad Decision
• Supersedes previous 2013 guidance re
natural products
• Does NOT impact previous guidance
regarding abstract ideas

8. Overall Process for Subject Matter Eligibility Under
35 U.S.C. 101

9. Factors that weigh toward eligibility
(significantly different):
• a) Claim is a product claim reciting something that initially appears to be a
natural product, but after analysis is determined to be non-naturally occurring
and markedly different in structure from naturally occurring products.
• b) Claim recites elements/steps in addition to the judicial exception(s) that
impose meaningful limits on claim scope, i.e., the elements/steps narrow the
scope of the claim so that others are not substantially foreclosed from using
the judicial exception(s).
• c) Claim recites elements/steps in addition to the judicial exception(s) that
relate to the judicial exception in a significant way, i.e., the elements/steps
are more than nominally, insignificantly, or tangentially related to the judicial
exception(s).
• d) Claim recites elements/steps in addition to the judicial exception(s) that do
more than describe the judicial exception(s) with general instructions to apply
or use the judicial exception(s).
• e) Claim recites elements/steps in addition to the judicial exception(s) that
include a particular machine or transformation of a particular article, where
the particular machine/transformation implements one or more judicial
exception(s) or integrates the judicial exception(s) into a particular practical
application. (See MPEP 2106(II)(B)(1) for an explanation of the machine or
transformation factors).
• f) Claim recites one or more elements/steps in addition to the judicial
exception(s) that add a feature that is more than well-understood, purely
conventional or routine in the relevant field.

10. Factors that weigh against eligibility
(not significantly different):
• g) Claim is a product claim reciting something that appears to be a
natural product that is not markedly different in structure from
naturally occurring products.
• h) Claim recites elements/steps in addition to the judicial
exception(s) at a high level of generality such that substantially all
practical applications of the judicial exception(s) are covered.
• i) Claim recites elements/steps in addition to the judicial
exception(s) that must be used/taken by others to apply the
judicial exception(s).
• j) Claim recites elements/steps in addition to the judicial
exception(s) that are well-understood, purely conventional or
routine in the relevant field.
• k) Claim recites elements/steps in addition to the judicial
exception(s) that are insignificant extra-solution activity, e.g., are
merely appended to the judicial exception(s).
• l) Claim recites elements/steps in addition to the judicial
exception(s) that amount to nothing more than a mere field of use.