Home » Patents » US Patents – Eligible Subject Matter – Top Tips for Prosecution (Finnegan Review Seminar)

US Patents – Eligible Subject Matter – Top Tips for Prosecution (Finnegan Review Seminar)

Keltie LLP

K2 IP Limited

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stacked-booksOne of the sessions at the recent Finnegan Patent Case Law covered the issue of patent eligible subject matter and the recent Interim Guidelines for Examination at the USPTO (more detail on which can be found in IPcopy’s earlier post here).

The session again highlighted the divergence in two of the Interim Guidelines examples between what might be expected in Europe and the position stated in the Guidelines (see Examples 2 and 5 in the previous IPcopy post). Also discussed in this session were some top tips to bear in mind when prosecuting software subject matter in the US.

  • Perhaps the most important tip was the suggestion to try and arrange a telephone interview with the Examiner. Often a section 101 objection has been raised because of a minor claim wording issue and the Examiners will occasionally suggest a solution to overcome their objection.
  • Avoid business terminology within the claim set if possible in order to get assigned to a more lenient section of the USPTO.
  • Include technical advantages within the specification.
  • Defer responding to section 101 rejections until other issues have been addressed.
  • Formulate Claim 1 as an apparatus claim.

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