Addressing §101 Patent Eligibility Rejections: Getting Off the Hook
Following the Supreme Court’s decision in Alice Corp. v. CLS Bank, discerning patent eligible subject matter and resolving matters of patent eligibility have become arduous tasks for patent holders and patent applicants alike. As one of the most confounding issues to impact patent law in years, determining what constitutes eligible subject matter under 35 U.S.C. § 101 has grown into a challenging analysis. The relevant Federal Circuit decisions that have been handed down since Alice include mixed holdings that provide limited guidance. Similarly, the United States Patent and Trademark Office (USPTO) has issued guidelines to help applicants identify patent eligible subject matter and address rejections under 35 U.S.C. § 101. However, these guidelines are another reflection of the uncertainty that surrounds subject matter eligibility under the Alice regime.
In this two-hour LIVE Webcast, a panel of thought leaders and patent attorneys assembled by The Knowledge Group will help the audience understand many of the important issues and insights with regard to recent court decisions on patent eligibility, as well as the impact of the Alice decision. The panel will also present key findings and best practices in addressing §101 patent eligibility rejections issued by the USPTO.
Major topics that will be covered:
- Subject Matter Eligibility Under §101: An Overview
- Identifying Patent-Eligible Inventions
- Best Practices for Drafting Patent Applications in View of Alice
- A Review of Subject Matter Eligibility Rejections Issued by the USPTO
- Best Practices for Addressing Subject Matter Eligibility Rejections
- Identifying and Traversing Common Rationale Relied Upon in Rejections
- Analogizing and Distinguishing Relevant Court Decisions and Examples Provided in the § 101 Guidelines
- Claim Amendment Strategies for Addressing Subject Matter Eligibility Rejections
- Procedural Tips for Traversing Subject Matter Eligibility Rejections
- Utilizing Examiner Interviews to Address § 101 Rejections
Seth M. Cannon, Partner
Carter, DeLuca, Farrell & Schmidt, LLP
- The different types of 101 rejections
- Using Examiner interviews to address 101 rejections
- Whether the claims should be amended
- Strategies for the written response
- Best practices for using the 101 guidelines
Viresh R. Patel, Attorney
Jones Robb PLLC
- Know your hook – Learn how your Examiner and art unit approach subject matter eligibility
- Tactics to gather more information about the issued Alice rejection
- Traverse based on substance
- Use cases and published examples to analogize and distinguish
- Traverse based on Procedure
- Use procedural arguments to bolster your case
- Get Creative
- Alice is a tricky topic, don’t get caught addressing it like it is any other rejection. With challenges like these, it is worthwhile to come up with creative ways to address the issues presented.
- Stay off the hook - Don’t get an Alice Rejection in the First place
- Tips on application drafting
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- Patent Owners
- Patent Counsel
- In-house Counsel
- General Counsel
- Other Related and Interested Professionals
Seth Cannon is a partner who joined the firm in 2009. An expert in all phases of both U.S. and foreign patent prosecution, his practice includes the strategic IP development and management of IP portfolios to help companies of all sizes to achieve their business and technology objectives. Mr. Cannon holds B.S. and M.S. degrees in electrical engineering and works with clients in a wide range of technical areas, including mechanical and electromechanical devices, software, medical devices, analog and digital electronics, control systems, digital signal processing, semiconductors, business methods, telecommunications, optics, and nanotechnology. Drawing on his extensive experience in all aspects of patent and trade secret litigation, he also conducts due diligence investigations, validity studies, and clearance searches, prepares opinions, and provides advice to support corporate transactions, technology and IP licenses, and litigation.
Seth Cannon is a partner who joined the firm in 2009. An expert in all phases of both U.S. and foreign …
Viresh Patel focuses his practice on drafting and prosecuting domestic and foreign patent applications. He also has experience with appeals, reexamination proceedings, and post-grant proceedings before the Patent Trial and Appeal Board. Viresh primarily works in the electrical, mechanical, computer, software, and business method arts.
Viresh previously served as a patent examiner at the United States Patent and Trademark Office. He examined patents related to data management, data security, information retrieval, networking, web technologies, other software inventions, and business methods. Viresh leverages his experiences as a patent examiner to expedite prosecution and ultimately secure favorable patent rights for his clients.
Viresh earned his B.S. in Computer Science from the University of Florida and his J.D. from The George Washington University Law School, where he served as an editorial staff member for the American Intellectual Property Law Association Quarterly Journal.
Viresh Patel focuses his practice on drafting and prosecuting domestic and foreign patent applications. He also has experience with appeals, …
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About Carter, DeLuca, Farrell & Schmidt, LLP
Carter DeLuca Farrell & Schmidt, LLP, a leader in intellectual property law, provides cost effective services to a large cadre of national and international clients. Throughout the phases of product or brand development, we form a critical part of our client’s development teams to provide preparation, prosecution and clearance services to maximize protection while navigating through freedom-to-operate challenges. We also provide extensive IP due diligence services and follow on IP asset assimilation to help our clients achieve their business objectives.
About Jones Robb PLLC
Jones Robb, PLLC is a boutique law firm specializing in patent legal services including patent preparation and prosecution, portfolio management, industrial design, infringement and validity analyses, post-grant proceedings, and licensing. It focuses on high-quality, customized and cost-effective service – the quality and experience of a large law firm with small firm flexibility. All Jones Robb attorneys are registered to practice before the U.S. Patent and Trademark Office and many have advanced technical degrees as well as experience as a patent examiner, in-house counsel, or with a large law firm. Its clients include Global Fortune 100 and 500 corporations as well as investment-backed start-ups in highly competitive industries. Jones Robb, PLLC is named as a leading patent prosecution law firm in the Washington, D.C. metro area in the 2016 IAM Patent 1000 and is a certified women-owned business enterprise (WBENC).