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Brinks Gilson & Lione June 25 webinar looks at patent prosecution strategies for biotech inventions

ANN ARBOR – June 20, 2014 -William Boudreaux, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will serve as a panelist on a webinar sponsored by Brinks discussing patent prosecution strategies in the wake of the March 4, 2014 United States Patent and Trademark Office (USPTO) memorandum entitled Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, & Natural Products.

The Guidance memorandum relates to new patent examination procedures for determining subject matter eligibility under 35 U.S.C. 101. These Guidelines were prepared in view of recent case decisions in Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, 133 S. Ct. 2017, 106 USPQ2d 1972 (2013) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012). While the USPTO asserts that the Guidance provides assistance to examiners in determining whether a claim covers patent eligible subject matter, uncertainties remain.

The webinar will be held on Wednesday, June 25, 2014 from 1 p.m. to 2 p.m. EST. Joining Boudreaux on the webinar are Brinks colleagues, Jennifer Fox and Rashad Morgan, both of the Research Triangle Park office. The panelists will discuss the USPTO Guidance, the underlying case law related to the Guidance, and the implications for U.S. practice, including:

  • Subject Matter Eligibility for biotechnology inventions in the United States, in view of recent Supreme Court precedent
  • The USPTO’s Procedure for implementing these recent decisions through the Guidance and its impact on drafting and prosecuting claims
  • Pending cases in the lower courts that may have an impact on the USPTO’s application of the Guidance
  • Application of the Guidance to pending applications in the USPTO
  • Strategies for drafting claims that will be deemed eligible based on the recent Supreme Court precedent and the Guidance.

William Boudreaux serves as co-chair of Brinks’ Biotechnology and Pharmaceutical practice group. He has practiced as a patent attorney specializing in pharmaceuticals and chemicals since 1992. Mr. Boudreaux’s practice includes client counseling for strategic patent portfolio development, global patent prosecution, IP diligence, and opinions for patentability, validity and freedom to operate.

There is no cost to attend the webinar and one hour of (Illinois) MCLE credit will be available, MCLE credit for other states available upon request. Please click here for more information about the event or to register.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at