Overcoming §103 Rejections of Software and Electronics Related Patents: Leveraging Recent Decisions and USPTO Guidance

Patent applicants must overcome the obviousness hurdle to secure a patent on their inventions. An obviousness determination is complex. Examiners regularly reject patent claims as obvious under §103 in view of a combination of prior art.

When counsel is responding to §103 rejections, counsel should carefully craft the response to minimize or eliminate prosecution history estoppel. Further, counsel should consider submitting evidence, such as comparative data, scientific arguments, and supporting declarations, in the reply to the rejection.

Applicants should anticipate more rejections going forward. For clients who receive a §103 rejection, counsel must plan and implement well-thought-out strategies for overcoming the rejections. Further, in light of the demands of AIA post-grant proceedings, such as post-grant reviews and inter partes reviews, counsel should carefully consider submitting evidence—such as comparative data, scientific arguments and supporting declarations—in the response to the §103 rejection.

Listen as our authoritative panel of patent attorneys examines how the patent examiners, the patent trial and appeals board (PTAB), and the courts have treated §103 rejections and the USPTO’s guidance on §103 rejections. The panel will discuss the distinct challenges for software and electronics related inventions and will offer best practices for patent counsel on ways to address and overcome §103 rejections in software and electronics related patent applications.

1. Current guidance
   1. Lessons learned from recent court decisions
   2. USPTO guidance
2. Distinct challenges for software and electronics related inventions
3. Strategies for overcoming §103 rejections in software and electronics related patent applications
   1. Identifying and arguing deficiencies in examiner's arguments
   2. Addressing insufficient and/or improper rationale behind rejection
   3. Amending claims
   4. Using affidavits/declarations and evidence
   5. Improved drafting to avoid rejections
4. Using Examiner Interviews for overcoming §103 rejections in software and electronics related patent applications

The panel will review these and other key issues:

• What evidentiary support should counsel provide to bolster its assertion of validity?
• What strategies should patent counsel implement to overcome §103 rejections for software and electronics related patents?
• How can patent counsel guide applicants in reducing the likelihood of rejection?