Douglas G. Gallagher

The United States Patent and Trademark Office (USPTO) has provided interim guidelines for determining subject matter eligibility under 35 U.S.C. §101 for process claims in view of the United States Supreme Court’s 2010 decision in Bilski v. Kappos.  The guidelines provide additional factors to aid in the determination of whether a method which fails the machine or transformation test is patentable or vice versa.  The guidelines state that §101 outcomes are not likely to change in most cases, and reminded that §101 should not be relied upon to avoid a full examination under other sections.  The guidelines outline specific factors weighing toward and against eligibility under §101.  Click here for more information on the interim guidelines. 

Woodard, Emhardt associate Douglas Gallagher was chosen to participate in the Indianapolis Bar Association’s Bar Leaders Series, Class VIII, 2010-2011.  The mission of the Series is to prepare lawyers for future opportunities in leadership roles and service in professional, political, judicial, civic, and community organizations.  Attorneys must submit an application to be considered by a selection committee and only 25 attorneys are chosen.  Congratulations to Doug!

Patent searching is typically the first step in determining whether to pursue patent protection for an invention.  On November 11, 2009, Woodard, Emhardt attorneys Chuck Schmal and Doug Gallagher presented a class on techniques for conducting patent searches using the US Patent & Trademark Office’s Public Web-based Examiner Search Tool (PubWEST) System to members of the Indiana Inventors Association and the Central Library staff.  The PubWEST System allows the public to access the same computer databases used by Examiners at the U.S. Patent and Trademark Office in Alexandria, Virginia.

The hour-long program included a general overview of the PubWEST System and a tutorial on conducting patentability searches.  Topics included basic search concepts and recommendations for organizing a search, recommendations for which PTO databases to use, specific techniques for conducting various types of searches (word, party, citation, and classification), and the various ways of viewing the information using PubWEST.

This program was conducted in conjunction with Woodard, Emhardt’s donation of upgraded PubWEST search terminals at the Library.  The class was provided as a companion resource to inventors as part of Woodard’s effort to improve patent searching capabilities at the Central Library.  For more discussion on the search terminals, please see Dedicated Patent Searching Terminals Available at the Central Library