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, April 19, 2018

Recorded event now available

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Program Materials

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.

Description

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 released several memoranda and solicited public comments on patent examination under Alice.

Applicants can anticipate more rejections going forward. Those who receive a §101 rejection and their counsel must plan and implement robust 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 presenters will offer best practices for patent counsel on ways to address §101 issues.

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Outline

  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 for rejection
    2. Examiner interviews
    3. Amending claims
    4. Improved drafting to avoid rejections
  3. Relationship between §§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)

Benefits

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?

Faculty

Bieneman, Charles
Charles Bieneman

Member
Bejin Bieneman

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

Shepherd, Michael
Michael P. Shepherd

Principal
Fish & Richardson

Mr. Shepherd’s practice emphasizes client counseling and patent prosecution in the areas of software and other...  |  Read More

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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:

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48 hours after event

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