Attorney Justin Cassell Presents on U.S. Patent Eligibility (Section 101) and AI Patentability at Taiwan IP Office

On March 19, 2026, Justin Cassell of Workman Nydegger delivered a presentation at the Taiwan Intellectual Property Office on subject matter eligibility in the United States under 35 U.S.C. § 101. Section 101 provides that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,” subject to the conditions and requirements of the law. Justin and George Chen, a patent agent at Workman Nydegger, were invited to participate, and Justin presented to an audience of patent examiners and private practice practitioners. Justin and George are grateful for the opportunity, and the presentation has since been refined to reflect the thoughtful discussion during the visit.

The presentation covered U.S. law on § 101 subject matter eligibility, focusing on judicial exceptions for abstract ideas, laws of nature, and natural phenomena. It traced the doctrine through key decisions such as State Street, Bilski, Mayo, and Alice. It also examined how the Alice and Mayo two-step framework affects the patentability of software, business methods, and AI inventions, highlighting differences between USPTO examination and Federal Circuit review.

A central theme of the presentation was that patent eligibility in the United States often depends on whether the claims and specification identify a specific technological problem and describe a particular technological solution, rather than simply stating a desired outcome or implementing an abstract idea on a generic computer. The presentation also covered current USPTO guidance, recent developments at the Patent Trial and Appeal Board (PTAB) and the Federal Circuit, and practical drafting and prosecution strategies for handling § 101 issues. The discussion with examiners and practitioners was especially valuable, and Justin appreciated the chance to exchange views on how subject matter eligibility continues to evolve in U.S. patent practice.

Access the presentation here:

About Workman Nydegger 
Workman Nydegger is a leading intellectual property law firm providing strategic counsel in patent prosecution, litigation, and IP portfolio management to clients worldwide.