Overcoming §103 Rejections of Software and Electronics Related Patents: Leveraging Recent Decisions and USPTO Guidance
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance for patent counsel for overcoming §103 rejections for software and electronics related patents. The panel will review recent case law and USPTO guidance on §103 patent eligibility and offer strategies to address §103 rejections.
- Current guidance
- Lessons learned from recent court decisions
- USPTO guidance
- Distinct challenges for software and electronics related inventions
- Strategies for overcoming §103 rejections in software and electronics related patent applications
- Identifying and arguing deficiencies in examiner's arguments
- Addressing insufficient and/or improper rationale behind rejection
- Amending claims
- Using affidavits/declarations and evidence
- Improved drafting to avoid rejections
- Using Examiner Interviews for overcoming §103 rejections in software and electronics related patent applications
The panel will review these and other key issues:
- What evidentiary support should counsel provide to bolster its assertion of validity?
- What strategies should patent counsel implement to overcome §103 rejections for software and electronics related patents?
- How can patent counsel guide applicants in reducing the likelihood of rejection?
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
Chirag B. Patel
Mr. Patel brings a combination of skills and experience in technological fields including electrical engineering,... | Read More
Mr. Patel brings a combination of skills and experience in technological fields including electrical engineering, telecommunications, software, and finance. He prepares and prosecutes patents related to wireless technologies, storage devices, storage area networks, digital signal processing, financial services, business methods, among other things. His practice also includes patent prosecution, counseling, non-infringement analysis and opinions, invalidity analysis and opinions, intellectual property licensing, software licensing, software development agreements, software services outsourcing agreements, and counseling clients on IP management.Close