Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements

Leveraging Recent Decisions and USPTO Guidance to Overcome Rejections

A live 90-minute premium CLE video webinar with interactive Q&A


Thursday, March 25, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, February 26, 2021

or call 1-800-926-7926

This CLE webinar will guide patent counsel through strategies for overcoming Section 101 rejections of biotech patents. The panel will review recent case law and USPTO guidance on Section 101 patent eligibility and offer strategies to address Section 101 rejections.

Description

The number of Section 101 rejections over all types of technologies, including biotechnology, has dramatically increased since the Supreme Court's decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc. (U.S. 2012) and Alice Corp. v. CLS Bank (U.S. 2014).

A review of USPTO guidance documents and art unit-specific responses to Section 101 can help practitioners craft a strategy for overcoming subject matter eligibility rejections. The guidance documents attempt to summarize the specific facts and holdings of exemplary 101 cases and suggest analogous fact patterns presented in prosecution to identify eligible and ineligible claims. Case law has not clearly illuminated the line between eligible and ineligible subject matter. Still, it does provide helpful guidance regarding claim types to avoid because they have been found ineligible by the courts.

The panel will discuss these cases and their counterpoints, suggesting potential strategies for eligible patent protection under Section 101.

Section 101 rejections and appeals continue to mount in numbers as examiners and PTAB judges attempt to reconcile inconsistent case law. Applicants should anticipate Section 101 rejections and devise strategies to prevent or mitigate these rejections. Anticipating and properly planning for eligibility rejections can lead to success in avoiding or overcoming these rejections.

Listen as our authoritative panel of patent attorneys discusses the impact of the Mayo and Alice decisions and the USPTO's guidance on Section 101 rejections. The panel will offer best practices for patent counsel to avoid or overcome Section 101 rejections for biotech patents.

READ MORE

Outline

  1. Current guidance
    1. How the courts have applied Mayo and Alice and lessons learned from those decisions
    2. USPTO guidance
  2. Strategies for avoiding or overcoming 101 rejections in biotech patents
    1. Identifying and arguing deficiencies in examiner's characterization
    2. Examiner interviews
    3. Addressing the rationale behind a rejection
    4. Amending claims
    5. Improved drafting

Benefits

The panel will review these and other relevant issues:

  • The impact of the Mayo, Myriad, Ariosa, and Vanda decisions on recent USPTO and Federal Circuit decisions addressing 101 rejections for biotech patents
  • The reliability of USPTO guidance documents
  • Robust patent specification and claim drafting tips, to help avoid 101 rejections
  • Potential strategies to overcome 101 rejections

Faculty

Barker, M. Paul
M. Paul Barker

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Barker has a diverse practice, including interferences, post-grant proceedings, patent prosecution, arbitration,...  |  Read More

Browning, Paul
Paul W. Browning, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

Leiman, Sara
Sara A. Leiman, Ph.D.

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Dr. Leiman prosecutes and provides strategic counseling on U.S. and foreign patent portfolios, provides validity and...  |  Read More

Live Webinar

Buy Live Webinar
Early Discount (through 02/26/21)

Live Webinar

$297

Buy Live Webinar & Recording
Includes special savings of $300 (through 02/26/21)

Live Webinar & Download

$394

Live Webinar & DVD

$394 + $24.45 S&H

Other Formats
— Anytime, Anywhere

Early Discount (through 02/26/21)

Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

48 hours after event

$297

Download

48 hours after event

$297

DVD

10 business days after event

$297 + $24.45 S&H