Responding to Patent Office Actions: Sect. 101 and 112 Rejections
Assessing Response Alternatives to Rejections on Non-Statutory Subject Matter and on Technicalities
Recording of a 90-minute premium CLE webinar with Q&A
This CLE webinar will provide guidance for patent counsel to respond to Patent Office Actions, understand key considerations, and assess the alternative responses to §§101 and 112 rejections. The panel will offer strategies to overcome pitfalls that arise in the application.
Outline
- Strategic considerations for counsel before responding to an office action
- Overcoming patent office rejections
- Key problem areas to anticipate and prepare to respond and follow up
- Strategies for overcoming issues outlined in Patent Office Actions
Benefits
The panel will address these and other key questions:
- What are the key considerations for patent counsel when responding to a §101 or §112 rejection?
- What are the areas that have proven to be red flags for the PTO?
- What other strategies should counsel implement to reduce the likelihood of rejection?
Faculty

Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,... | Read More
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
CloseDr. Lisa M. Matovcik
Senior Patent Attorney, Critical Care
Novartis Pharmaceuticals
Dr. Matovcik leads the prosecution of large patent portfolios of biological compounds, develops and implements global... | Read More
Dr. Matovcik leads the prosecution of large patent portfolios of biological compounds, develops and implements global patent strategies. She also develops market exclusivity projections, performs due diligence analysis, and provides intellectual property transactional support.
CloseLauren L. Stevens, Esq.
Global Patent Group
Ms. Stevens practices strategic client counseling and patent procurement in the pharmaceutical area, including the... | Read More
Ms. Stevens practices strategic client counseling and patent procurement in the pharmaceutical area, including the preparation of validity, infringement, and freedom-to-operate opinions regarding chemical and pharmaceutical patents. She advises clients on intellectual property matters related to a wide range of technologies.
CloseLinda J. Thayer
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Thayer focuses her practice on patent litigation and administrative trial procedures to request review of the... | Read More
Ms. Thayer focuses her practice on patent litigation and administrative trial procedures to request review of the patentability of issued patents outside of litigation, such as post-grant review, inter partes review, and the transitional program for review of covered business method (CBM) patents. She conducts due diligence investigations in connection with investments and mergers and acquisitions, and advises clients on worldwide patent portfolio development, management, licensing, and sales.
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