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 premium CLE video webinar with Q&A

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Conducted on Thursday, June 25, 2020

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Course Materials

This CLE course will guide patent counsel for overcoming Section 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 Section 101 rejections.


Since the Supreme Court's decision in Alice Corp. v. CLS Bank, the USPTO 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.



  1. State of the law and latest post-Alice Corp. trends
    1. Federal courts
    2. PTAB
    3. USPTO examiners
  2. Strategies for addressing 101 rejections
    1. Identifying and arguing deficiencies in examiner's characterization and addressing the 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)


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?


Bieneman, Charles
Charles Bieneman

Bejin Bieneman

Charles Bieneman is a member of the firm. Prior to forming Bejin Bieneman PLC, he was a partner in a Michigan...  |  Read More

Shepherd, Michael
Michael P. Shepherd

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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