To Be or Not To Be: That is the Abstract Question, Naturally

(312 Ratings)

Produced on: October 27, 2016

Course Format On Demand Audio

Taught by


Course Description

Time 91 minutes
Difficulty Intermediate

In a trilogy of decisions since 2010, the Supreme Court changed its interpretation of the judicial exceptions to patentability, namely laws of nature, natural phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S.593, 601, 130 S. Ct. 3218, 3225, 95 USPQ2d 1001, 1005-06 (2010); Association for Molecular Pathology v. Myriad Genetics, Inc. 569 U.S. _, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1979 (2013); and Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1980 (2014).

In this seminar, Aasheesh Shravah and Amy Goldsmith, Intellectual Property Practice Attorneys at Tarter Krinsky & Drogin LLP, discuss the effect of these decisions on the patentability of biotech, computer software and business methods. They also review how the U.S. Patent Office has responded, and examine the various district court and Federal Circuit decisions interpreting the USPTO Guidelines and the Bilski/Myriad/Alice trilogy. 

Learning Objectives:
  1. Understand the USPTO Guidelines for biotech, computer software and business method patents
  2. Recognize what the USPTO has deemed is an allowable application
  3. Answer the question: “What is the test for patent eligibility and how has it been interpreted by the district courts and the Federal Circuit?”
  4. Identify the interplay between patents, copyrights and trade secrets


Amy Goldsmith

Tarter Krinsky & Drogin LLP

Successful, profitable businesses share certain characteristics: immediately recognizable brands, desirable products or services, and a strategic plan which minimizes legal risks. As co-chair of the Intellectual Property Group at Tarter Krinsky & Drogin, Amy B. Goldsmith partners with clients to provide practical legal advice and connections to grow their businesses. A strategic advisor, she guides clients in all stages of their development from idea conception and protection, to funding, manufacturing and enforcement.

She will advise you whether your trademark is available in the United States and globally, if patents should be a part of your strategy, and if your design team’s new product shares too many features of the competition’s copyrighted bestseller. She will design contracts that make sense. Amy will also guide you through the clearance process, whether the subject matter is books, movies or live action. If a dispute is on the horizon, she will be by your side until a fair resolution is reached.

Amy protects the global interests of national and international clients in a wide variety of industries, including fashion, cosmetics, pet products, publishing, medical devices, exercise equipment, web-based business applications and telecommunications platforms, and consumer and designer goods.

She is a Vice President of the New York Women's Bar Association. She is also a member of the American Bar Association and the International Trademark Association (INTA) and is on the Board of Directors of Savvy Ladies, a non-profit whose mission is to educate women to be financially savvy. Amy also was a speaker at and served on the Advisory Board for TedxTimesSquare.

Before joining Tarter Krinsky & Drogin, Amy was a partner at Gottlieb, Rackman & Reisman, P.C.

Aasheesh Shravah

Tarter Krinsky & Drogin LLP

Aasheesh Shravah is Counsel at Tarter Krinsky & Drogin LLP in the Intellectual Property Practice. He manages intellectual property portfolios and procures domestic and international intellectual property protection for clients, including patents and trademarks.

Understanding that IP due diligence is critical to business success, he reviews and analyzes products to determine potential patent protection, performs comprehensive studies of intellectual property portfolios, and provides guidance on creating/designing products that avoid potential infringement issues. His work includes patentability searches, freedom to operate opinions and drafting/negotiating licensing agreements.

Aasheesh prosecutes domestic and international patent applications for diverse technologies, including mechanical and electro-mechanical devices, medical devices and imaging, life sciences, nanotechnology, hardware, consumer products (As Seen on TV Products), steel manufacturing, building infrastructure/materials, fuel cells, alternate energy systems, packaging technology, Internet technology including search engines, wireless mobile devices, wireless communication and business methods.

From pre-suit investigation through appeals, Aasheesh is skilled in patent and trademark litigation in federal district and appellate courts. He advises on legal strategy and negotiates settlement offers, and has litigated cases in the fields of medical devices, consumer products, hardware, mechanical devices, wireless devices, Internet search engines and business methods.


John M.

well done with good practice suggestions based in their analysis of the law

Vasiliki N.

Fascinating area of the law. Good presentation.

Blake C.

another good program on Intellectual Property. I can't find many IP CLE seminars here in Arkansas. thanks.

Linda E.

Thank you for the summary and practice points, particularly those at the end.

Robert F.

A good review of a very esoteric subject.

Thomas T.

Good case law review of Alice! Thank you!

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$ 89 Intellectual Property Law and Patent Law In Stock


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