Responding to Patent Office Actions: Sect. 101 and 112 Rejections

Description

Patent counsel can avoid some problems causing a rejection by the patent examiner by drafting the application in anticipation of common rejections. Rejections under §101, particularly as related to software, often come down to the wording. Many §101 rejections can be overcome by demonstrating that the invention is operable.

However, before replying to a rejection, counsel should examine the rejection and determine first whether the rejection reflects the reality of the patent subject matter described in the application. How did the application fail to be eligible subject matter?

There are several common problems that result in rejections on technicalities under §112, ranging from failing to add a proper limitation on a dependent claim to issues of lack of enablement. Counsel should examine the logic of the rejection. Was the rigorous standard for an enablement rejection met?

Counsel must plan and carefully implement well-thought-out strategies for overcoming the rejections.

Listen as our authoritative panel discusses what patent counsel must consider when presented with a Patent Office Action and ways to overcome §§101 and 112 rejections or objections. The panel will review the areas where many problems occur and offer strategies for surmounting the problems.