Overcoming Sect. 101 Rejections: USPTO Guidance, Recent Decisions to Meet Sect. 101 Patent Eligibility Requirements

A live 90-minute premium CLE video webinar with interactive Q&A

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Tuesday, August 16, 2022 (Now)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926
Course Materials

This CLE course will guide patent counsel to overcome Section 101 rejections. The panel will review recent case law and USPTO guidance on Section 101 patent eligibility and offer strategies to address Section 101 rejections.

Description

Since the Supreme Court's decision in Alice Corp. v. CLS Bank (2014), there has been an increase in Section 101 rejections. The Alice decision and cases that apply Alice guide what subject matter is eligible for patent protection under Section 101.

The USPTO has dramatically increased its rejections under Section 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 in the future. Applicants who receive a Section 101 rejection and their counsel must plan and carefully implement well-thought-out strategies for overcoming the rejections.

Since the Supreme Court has refused to address patent eligibility after Alice, Congress has taken action. The Patent Eligibility Restoration Act of 2022 would expand the types of inventions that can be patent eligible by eliminating the role that novelty and other sections of the Patent Act play in the patent-eligibility analysis. Although this reflects a step forward, the Bill also includes some categorical exclusions and raises other issues.

Listen as our authoritative panel of patent attorneys discusses Section 101 rejections since the Alice decision. The panel will examine recent case law and USPTO guidance and offer best practices for patent counsel to overcome Section 101 rejections. Additionally, the panel will discuss the proposed legislation and provide their thoughts on how it may affect the patent-eligibility analysis.

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Outline

  1. Court treatment of Section 101 since Alice Corp.
  2. USPTO guidance
  3. Strategies for overcoming Section 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

Benefits

The panel will review these and other key issues:

  • How have the courts treated Section 101 rejections since Alice?
  • What strategies should patent counsel implement to overcome Section 101 rejections?
  • How can patent counsel guide applicants in reducing the likelihood of rejection?

Faculty

Kiklis, Michael
Michael L. Kiklis

Partner
Kiklis and Clark

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit...  |  Read More

Kunin, Stephen
Stephen G. Kunin

Partner
Maier & Maier

Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also...  |  Read More

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