William A. McKenna

Woodard Emhardt Attorneys Recognized by 2017 Indiana Super Lawyers

February 22, 2017

We are pleased to announce that Woodard, Emhardt partners Thomas Henry, Spiro Bereveskos and Daniel Lueders have been named Super Lawyers for 2017. Additionally, Woodard, Emhardt partner Bill McKenna has been named as a Rising Star for 2017. Congratulations to all!


USPTO Updates Examiner Guidance on Patent Subject Matter Eligibility – Section 101

May 20, 2016

The last update to the USPTO’s guidance to examiners on patent subject matter eligibility was issued in July of 2015. The USPTO recently provided the next iteration, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. Copies of these documents can be obtained from the USPTO’s Subject Matter Eligibility page.

The new life science examples use hypothetical fact scenarios (such as vaccines and diagnostics) to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas.

The examiner memorandum lays out what is required for a proper rejection and provides guidance to the examining corps on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained.

In addition to this new update, the USPTO has stated that it will continue to conduct interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples.

The ultimate goal is to efficiently issue subject matter rejections where appropriate and provide a sound basis for those rejections, but also to remove those rejections where appropriate arguments and/or amendments are presented. As the post-Alice case law continues to evolves, this is certainly a difficult task.

To learn more about subject matter eligibility and how it can affect currently issued patents or the pursuit of future patents, feel free to contact one of our attorneys.


Woodard Emhardt Obtains Dismissal of Trademark Infringement Complaint

May 19, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a trademark infringement lawsuit filed against operators of historical horse racing games by numerous prominent race tracks should be dismissed. The suit alleged that the defendants infringed upon the Plaintiffs’ trademarks by using the racetracks’ names to identify the location where historic horse races had taken place. The Court reasoned that the defendants were “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…” Moreover, the court found that the defendants were protected by the fair use defense when describing where an event took place, even when the location described is most commonly conveyed using a registered trademark. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Woodard Emhardt Obtains Dismissal of Patent Infringement Complaint Under Section 101

May 12, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a patent infringement lawsuit filed against operators of historical horse racing games should be dismissed as the three patents asserted failed to claim patent eligible subject matter under 35 U.S.C. 101. In dismissing all three infringement claims, the Court wrote “[Plaintiff]’s patents encompass subject matter facially unpatentable under Section 101. The only plausible reading of the ‘150, ‘887, and ‘737 patents reflects that they are ineligible for patent protection. The Asserted Patents are abstract ideas, and [plaintiff] has failed to demonstrate an inventive concept required to transform these claims into patentable subject matter within the meaning of Section 101. Thus, the claims asserted in the Amended Complaint must be dismissed.” The opportunity for companies facing the threat of infringement from patent holders to obtain either invalidate those patents or obtain prompt and efficient dismissal such as this in litigation has significantly increased following the Supreme Court’s decision in Alice. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Bill McKenna Speaks with University of Dayton Engineering Students

October 7, 2015

On October 6, Bill McKenna spoke with engineering students completing their senior design projects as part of the engineering program at the University of Dayton. Bill’s talk covered a high level overview of intellectual property as well as an understanding of the various aspects of patent law they are likely to encounter in their careers, including the process for obtaining patents, understanding the patents of others, and designing around or invalidating patents to clear new products. The program was sponsored by the Intellectual Property Law Section of the University of Dayton School of Law.


USPTO Provides Statistics on Petition Pendency

September 11, 2015

The United States Patent and Trademark Office has launched a new website—the USPTO Patents Petitions Timeline. The new website provides the average pendency and success rates (over the past 12 months) for each type of petition that can be filed during the patent prosecution process. For example, petitions to correct patent term adjustment periods remain pending for nearly a year and have a success rate of 42%, while petitions to correct inventorship remain pending for roughly five months and are granted nearly 84% of the time. Not surprisingly, petitions for extensions of time during prosecution are quickly granted 100% of the time.

The Patents Petitions Timeline will help practitioners and applicants make better strategical decisions on when to file a particular petition during prosecution or for the life of the issued patent. Moreover, much like the first office action predication available in PAIR, this provides some guidance as to the likely timing of a decision for the various petitions available.


2015 Indiana Super Lawyers

February 13, 2015

We are pleased to announce that Woodard, Emhardt partners Tom Henry, Spiro Bereveskos, and Dan Lueders have been named Super Lawyers in the 2015 edition of Indiana Super Lawyers. Woodard, Emhardt partner Bill McKenna and associate Jim Blaufuss have been named Rising Stars for 2015. Congratulations! Super Lawyers recognizes outstanding lawyers through a rigorous ratings and selection process.


USPTO Reduces Electronic Trademark Filing Fees

December 31, 2014

Beginning on January 17, 2015 the fee for electronically filing a trademark application will drop $50 to $225 for an application with confirms to an existing classification (TEAS Plus) and $275 for all other applications. The USPTO just issued a Final Rule notice reducing certain trademark filing fees. The USPTO also will reduce the fee to renew a trademark registration by $100 to $300 per class, if filed electronically. In an effort to promote the efficiencies of electronic filing, the reduced fees are only available if the applicant files the application electronically and agrees to receive communications by email and files all applications, responses and other documents through TEAS.


USPTO Launches New Beta Website

December 26, 2014

The USPTO has publicly launched a beta version of its new website. The site is part of the agency’s rollout of “next Generation” technologies that will improve the experience of doing business with the USPTO. The USPTO’s new site aims to make it easier for users to access services and accomplish tasks. In addition, the site will also become increasingly mobile friendly, making it more convenient than ever to work with the USPTO.


USPTO Releases New Guidelines on Patent Subject Matter Eligibility Following Alice Corp.

December 19, 2014

On December 16, 2014, the USPTO released its interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101. The new guidance was prepared in view of recent decisions by the U.S. Supreme Court, including the decision regarding the patentability of computer implemented inventions in Alice Corp. In referencing Alice Corp., the guidance states that something more is required “beyond generally linking the use of the judicial exception to a particular technological environment” to warrant a patent. However, the guidance does not make clear when that link transitions to “an improvement to another technology or technical field” which warrants patent protection.

The USPTO is seeking comments on the guidance and its application is still yet to be seen, however, this is yet another step in applying the Supreme Court’s recent analyses.

For more information, the full text of the guidance may be reviewed here.

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