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About the Course
Introduction
This CLE course will guide patent counsel to overcome Section 101 rejections. The panel will review recent case law and USPTO guidance on Section 101 patent eligibility and offer strategies to address Section 101 rejections.
Description
Since the Supreme Court's decision in Alice Corp. v. CLS Bank (2014), there has been an increase in Section 101 rejections. The Alice decision and cases that apply Alice guide what subject matter is eligible for patent protection under Section 101.
The USPTO has dramatically increased its rejections under Section 101, and the federal courts and the Patent Trial and Appeal Board have been increasingly active in invalidating issued patents. Further, the USPTO released several memoranda and solicited public comments on patent examination under Alice.
Applicants can anticipate more rejections in the future. Applicants who receive a Section 101 rejection and their counsel must plan and carefully implement well-thought-out strategies for overcoming the rejections.
Listen as our authoritative panel of patent attorneys discusses Section 101 rejections since the Alice decision. The panel will examine recent case law and USPTO guidance and offer best practices for patent counsel to overcome Section 101 rejections.
Presented By
For over 30 years, Mr. Kiklis has been called upon by industry-leading technology companies to handle some of their most important patent-dispute matters. He focuses his practice on trials at the USPTO’s Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, and patent litigation. Mr. Kiklis is often called upon to handle cases worth more than $100 million. He has handled 100 PTAB trials and over 20 appeals to the Federal Circuit. Mr. Kiklis has an extensive background in computer science based on his six years of experience as a software developer at some of the computer industry’s leading companies as well as his academic background, holding both a BS and MS in computer science. He is the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence and a co-author on PLI’s post grant treatise (1st edition). Mr. Kiklis is best known for his long history of writing and speaking on patentable subject matter under 35 U.S.C. § 101, including numerous articles and speeches at bar associations and professional organizations.
Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also serves as an expert witness and consultant on patent policy, practice and procedure. During his tenure at the USPTO, he served in many executive positions, including as Deputy Commissioner for Patent Examination Policy.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Live Online
On Demand
Date + Time
- event
Thursday, February 8, 2024
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Court treatment of Section 101 since Alice Corp.
- USPTO guidance
- Strategies for overcoming Section 101 rejections
- Identifying and arguing deficiencies in examiner's characterization
- Examiner interviews
- Addressing rationale behind rejection
- Amending claims
- Improved drafting to avoid rejections
The panel will review these and other key issues:
- How have the courts treated Section 101 rejections since Alice?
- What strategies should patent counsel implement to overcome Section 101 rejections?
- How can patent counsel guide applicants in reducing the likelihood of rejection?
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