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

Conducted on Thursday, May 4, 2017

Recorded event now available

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Program Materials

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.


Since the Supreme Court’s decision in Alice Corp. v. CLS Bank, the USPTO has dramatically increased its rejections under 35 U.S.C. §101, and the federal courts and the Patent Trial and Appeal Board have been increasingly active in invalidating issued patents. Further, the USPTO has released several memoranda and solicited public comments concerning patent examination under Alice.

Applicants can anticipate more rejections going forward. Those who receive a §101 rejection and their counsel must plan and carefully implement well thought out strategies for deciding whether to file and for overcoming patent eligibility rejections issued in pending applications.

Listen as our authoritative panel of patent attorneys discusses how courts and the PTAB have been applying the Alice decision and the USPTO’s guidance on §101 rejections. The panel will offer best practices for patent counsel on ways to address §101 issues.



  1. State of the law and latest post-Alice Corp. trends
    1. Federal courts
    2. PTAB
      1. Ex parte appeals
      2. Covered business method review
    3. USPTO examiners
      1. Guidance and public comments
      2. Actual USPTO practice and statistics
  2. Strategies for addressing §101 rejections
    1. Identifying and arguing deficiencies in examiner’s characterization and addressing rationale behind rejection
    2. Examiner interviews
    3. Amending claims
    4. Improved drafting to avoid rejections
  3. Relationship between Sections 101 and 112
    1. More detail meets written description and enablement requirements and optimizes for 101 rejections
    2. 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?


Charles Bieneman
Charles Bieneman

Bejin Bieneman

Prior to forming the firm, an IP boutique serving clients nationally and internationally, Mr. Bieneman was a partner in...  |  Read More

Isaac T. Slutsky
Isaac T. Slutsky

Brooks Kushman

Mr. Slutsky’s practice focuses on the preparation and prosecuting of patent applications, primarily in the...  |  Read More

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