Overcoming 101 Rejections for Computer and Electronics Related Patents
Leveraging USPTO Guidance and Recent Decisions to Meet 101 Patent Eligibility Requirements
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide guidance to patent counsel for overcoming §101 rejections for computer and electronics-related patents. The panel will review recent case law and USPTO guidance on §101 patent eligibility and offer strategies to address §101 rejections.
- State of the law and latest post-Alice Corp. trends
- Federal courts
- Ex parte appeals
- Covered business method review
- USPTO examiners
- Guidance and public comments
- Actual USPTO practice and statistics
- Strategies for addressing §101 rejections
- Identifying and arguing deficiencies in examiner’s characterization and addressing rationale behind rejection
- Examiner interviews
- Amending claims
- Improved drafting to avoid rejections
- Relationship between Sections 101 and 112
- More detail meets written description and enablement requirements and optimizes for 101 rejections
- Avoiding functional language avoids rejections for indefiniteness under 112(b) and 112(f)
The panel will review these and other key issues:
- What are the key recent §101 decisions, not only at the Federal Circuit but in the District Courts and at the Patent Trial and Appeal Board?
- How can specifications and claims be drafted to guard against §101 rejections?
- What strategies and arguments can be used in patent prosecution to overcome §101 rejections?
Prior to forming the firm, an IP boutique serving clients nationally and internationally, Mr. Bieneman was a partner in... | Read More
Prior to forming the firm, an IP boutique serving clients nationally and internationally, Mr. Bieneman was a partner in a Michigan IP firm. He was also a patent examiner with the USPTO, where he examined claimed inventions in the areas of computer software, databases, and the World Wide Web. Mr. Bieneman has served as an adjunct professor of Computer Law at the Thomas M. Cooley Law School.Close
Isaac T. Slutsky
Mr. Slutsky’s practice focuses on the preparation and prosecuting of patent applications, primarily in the... | Read More
Mr. Slutsky’s practice focuses on the preparation and prosecuting of patent applications, primarily in the computer science and electrical arts. He provides counseling to clients of all sizes, ranging from Fortune 500 companies to small start-ups. Mr. Slutsky has a deep understanding of various technologies in computer science and electrical systems and he has worked with clients in a broad range of industries, including computer software, consumer electronics, telecommunications, automotive and medical devices.Close