Overcoming Sect. 101 Rejections Post-Alice Corp.

Leveraging USPTO Guidance and Recent Decisions to Meet Sect.101 Patent Eligibility Requirements

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, February 12, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide guidance for patent counsel for overcoming §101 rejections. The panel will review recent case law and USPTO guidance on §101 patent eligibility and offer strategies to address §101 rejections.


In the recent past, §101 was not often used to invalidate a patent. However, since the Supreme Court’s decision in Alice Corp. v. CLS Bank (June 19, 2014) there has been an increase in the number of §101 rejections. The Alice Corp. decision and cases applying Alice Corp. provide guidance on what subject matter is eligible for patent protection under §101.

Following the decision, the USPTO released a memorandum on Preliminary Examination Instructions in light of Alice Corp. This memorandum came on the heels of the USPTO’s March 4 guidance, which also prompted new patent eligibility rejections.

Applicants can anticipate more rejections going forward. Applicants who receive a §101 rejection and their counsel must plan and carefully implement well-thought-out strategies for overcoming the rejections.

Listen as our authoritative panel of patent attorneys discusses the impact of the Alice Corp. decision and the USPTO’s guidance on §101 rejections. The panel will offer best practices for patent counsel on ways to overcome §101 rejections.



  1. Review of Alice Corp. and the Court’s position on §101
  2. USPTO guidance
    1. Memorandum on Preliminary Examination Instructions in Light of Alice Corp.
    2. Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, & Natural Products
  3. Strategies for overcoming §101 rejections
    1. Identifying and arguing deficiencies in examiner’s characterization
    2. Examiner interviews
    3. Addressing rationale behind rejection
    4. Amending claims
    5. Improved drafting to avoid rejections


The panel will review these and other key issues:

  • What impact has the Alice Corp. decision had on §101 rejections?
  • What guidance does the USPTO’s memorandum on Preliminary Examination Instructions in light of Alice Corp. provide?
  • What other strategies should patent counsel implement to overcome §101 rejections?
  • How can patent counsel guide applicants in reducing the likelihood of rejection?


Bieneman, Charles
Charles Bieneman

Bejin Bieneman

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

Kettelberger, Denise M.
Denise M. Kettelberger, Ph.D.

Sunstein Kann Murphy & Timbers

Dr. Kettelberger is a patent attorney with deep experience in bioscience industries. She has special expertise in IP...  |  Read More

Kowalchyk, Katherine M.
Katherine M. Kowalchyk, Ph.D.

Merchant & Gould

Dr. Kowalchyk concentrates her practice in IP law, with a particular emphasis in biotechnology. She is experienced in...  |  Read More

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