In April 2018, the United States Patent and Trademark Office issued guidance after the Federal Circuit’s decision in Berkheimer, which related to Step 2B of the Alice/Mayo framework. Then again in January 2019, the USPTO issued further guidance, this time relating to Step 2A of the Alice/Mayo framework. As a result, it has become easier to obtain patents on computer-implemented inventions – or software – from the U.S. Patent Office. But easier does not mean easy.
Meanwhile, Federal Circuit has continued to issue decisions that leave many practitioners wondering what strategies are effective for overcoming 101 rejections in the current environment or, better yet, avoiding them in the first place.
Join Gene Quinn, President, and CEO of IPWatchdog, Inc, on THURSDAY, September 26, 2019, at 12:00 pm (noon) EDT,, for a wide-ranging conversation on best practices for responding to patent eligibility rejections at the USPTO both in light of USPTO guidance and in light of the most recent Federal Circuit cases. Joining Gene will be David Hall, Tim Wall, David Purks, Scott Hatfield and Lynne Borchers, all lawyers from Sage Patent Group, a firm recently recognized by Juristat as having the highest allowance rate in the country for cases that include a rejection under 35 USC 101.
In addition to taking as many questions as possible, we will specifically address:
- Drafting tips for avoiding 101 rejections in the first place;
- Responding to 101 rejections;
- Interviewing examiners to overcome 101 rejections; and
- Tips for handling 101 rejections on appeal.