has many years of experience working in innovative engineering environments, allowing him to speak the language of an innovator and apply his legal skills to guide his clients through the intellectual property process. While at Fox Rothschild, Dennis provided infringement and right-to-use analyses, including the drafting of opinion letters. He often assisted clients to identify and design around existing IP roadblocks, helping them avoid costly litigation. He also garnered extensive experience negotiating and drafting development agreements, licenses, confidentiality and non-disclosure agreements and employment and contractor agreements, as well as having significant experience in the procurement and licensing of trademark assets.
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The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance provides that if an abstract idea represented in one or more claim elements is integrated into a practical application by other limitations in the claim, then the claim as a whole would not be directed to a judicial exception and, as such, would be considered patentable under section 101. The revised guidance states that “a claim that integrates a judicial exception into a practical application will apply, rely on or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” This would seem to be in line with the public policy underlying the judicial exception of not allowing a claim to preempt all means of achieving a desired result. Often, patent claims are drafted such as to contain claim elements directed to desired outcomes as opposed to specific ways of achieving the desired outcomes. Claim elements directed only to desired outcomes have the effect of preempting all ways of achieving the desired outcome, and, as such, are considered to “monopolize the judicial exception”. The public policy behind the judicial exception seeks to prevent the monopolization of the judicial exception by a claim reciting only the desired outcome.