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 guide 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 for rejection
- Examiner interviews
- Amending claims
- Improved drafting to avoid rejections
- Relationship between §§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 critical issues:
- What are the significant recent §101 decisions at the Federal Circuit, the district courts and PTAB?
- 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
Michael P. Shepherd
Fish & Richardson
Mr. Shepherd’s practice emphasizes client counseling and patent prosecution in the areas of software and other... | Read More
Mr. Shepherd’s practice emphasizes client counseling and patent prosecution in the areas of software and other computer-related technologies. He has significant experience counseling clients on obtaining patent protection for a variety of technically complex technologies, including computer architecture and chip design, graphics processing units, robotics, neural networks and other machine learning technologies, programming language design, static analysis of source code, and cloud computing platforms and applications.Close