NAPP Webinar: Tips and Tricks to Address Subject Matter Eligibility Rejections with Examiners

Description

Description: This presentation will provide an overview of 35 U.S.C. section 101 statutory requirements and consider what qualifies as patent eligible subject matter as interpreted by courts and the USPTO under the Alice/Mayo framework. 

We’ll look at how subject matter eligibility is determined by examiners, using judicial exceptions, additional USPTO considerations, and examination practices (especially in Technology Center 3600). 

We’ll consider how courts tend to view 101 issues under Alice, often conflating the patent laws to resolve eligibility questions. 

We’ll take a project management view of the problem. 

The presentation will provide tips for specification, claim, and office action response drafting for successful prosecution of 101 rejections. 

Attendees will be given a practical checklist for various issues to look for and consider in resolving these 101 rejections. 

Speaker: Lisa Schreihart 

Lisa is an experienced (20 years) electrical engineer (software, signals, and controls focused), a USPTO Registered Patent Attorney, and a NCPP Certified Patent Practitioner. Her time spent as a Patent Examiner in Art Unit 3685 gave her valuable insight into 35 U.S.C. section 101 examination practices, which she further developed in working closely with examiners on 101 issues across many cases at various law firms and with many clients as a go-to 101 rejection handler. 

While Lisa has found that not every subject matter eligibility problem is solvable under Alice, resolution of most 101 rejections is attainable with tweaking of perspective and refocus on what is important to an examiner, often producing stronger claims as a result. For a bit more insight, Lisa performs improv comedy in DC, so she has practice in making do with what she’s given.