Mr. Kelly and Dr. Shier will discuss the conflict between the USPTO patent eligibility guidance and the Federal Circuit case law and offer some suggestions on how to comply with both. The Federal Circuit has criticized and refused to even consider the USPTO guidance when reviewing district court patent invalidations and ex parte appeals from the PTAB. The districts courts have similarly declined to consider the guidance beginning with the Cleveland Clinic II case. The problem is that claims patent eligible under the USPTO Guidance may be ineligible under the Federal Circuit case law. Part of the problem is that the Federal Circuit’s opinions often do not set out the reasons for the decision with clarity and the other is the desire of the USPTO to try and develop simple rules for determining eligibility. The problem with this effort is that the USPTO is without the authority to promulgate substantive rules. This webinar will discuss the problems and suggest some techniques for threading the eye of the needle of patent eligibility.