Joseph Cygan of Cygan Law Offices P.C.

The 2014 Supreme Court case Alice Corp. Pty. Ltd. v. CLS Bank Int’l, et al., 573 U.S. 208 (2014) (“Alice”) has complicated the understanding of Subject Matter Eligibility (SME) for software related claims in the United States Patent and Trademark Office and in the courts. In Alice, the Supreme Court held that patent claims directed toward a certain software invention were not patent eligible because “the claims at issue" amounted to “nothing significantly more” than an instruction to apply an “abstract idea.” Since the Alice case holding, the notion of an “abstract idea” has caused significant issues for those seeking patent protection for software related inventions, as well as for patent owners because patent infringement defendants have used the "abstract idea" analysis as a weapon in the courts to invalidate patents. In the presentation, we’ll review how the USPTO has been applying the “abstract idea” analysis to patent claims and provide strategies for avoiding SME issues with software related inventions.

Biography:

Mr. Cygan's law practice focuses on patent application preparation and prosecution for my clients before the United States Patent and Trademark Office, working in cooperation with international associate counsel to obtain patents worldwide under the Patent Cooperation Treaty and Paris Convention, patentability and infringement analysis and opinions, and various intellectual property related transactional matters.

Mr. Cygan has extensive experience in all aspects of patent procurement and technology patent portfolio development, and has personally drafted and prosecuted hundreds of patent applications for high-tech companies. He provides his clients with turnkey patent procurement services beginning with interviewing corporate inventors, including engineers and scientists, and preparing and prosecuting patent applications through to final disposition, including handling appeals before the Patent Trial and Appeal Board (PTAB). He also maintains a network of foreign counsel to assist in procurement of patents and trademarks internationally for my clients.

Mr. Cygan has assisted clients in handling cease and desist letters regarding patent, trademark, copyright and trade dress matters, and has defended client interests by resolving or negotiating and obtaining settlement agreements. He has also assisted clients with trademark consent agreements, patent, trademark and copyright licensing agreements, and software licensing agreements. He renders patentability opinions, non-infringement opinions, trademark clearance opinions, and freedom-to-operate opinions.

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