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
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.
Outline
- State of the law and latest post-Alice Corp. trends
- Federal courts
- PTAB
- USPTO examiners
- Strategies for addressing 101 rejections
- Identifying and arguing deficiencies in examiner's characterization and addressing the 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)
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
Charles Bieneman
Member
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
Charles Bieneman is a member of the firm. Prior to forming Bejin Bieneman PLC, he was a partner in a Michigan intellectual property firm. Previously, he was a patent examiner with the U.S. Patent and Trademark office, where he examined claimed inventions in the areas of computer software, databases, and the World Wide Web. He also held management positions with two computer software companies and has significant real world experience as a software developer, consultant, and project manager. He gained experience as an attorney with the U.S. Securities and Exchange Commission and the Washington, D.C. office of a national law firm. He blogs about software and intellectual property issues at The Software Intellectual Property Report (http://swipreport.com).
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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
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.
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