Tips For Patent Applications Facing 'Abstract Idea' Rejection

Law360, New York ( August 22, 2016, 4:10 PM EDT) -- Shifts in the landscape for patent application claims of software and computer-based inventions, brought about by the U.S. Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International et al. and subsequent actions in the courts, continue to change the examination process and challenge patent practitioners to come up with effective strategies when facing the 35 USC §101 rejection of claims allegedly directed to an abstract idea. Here are some tools we have found useful in responses to office actions during examination of claims for software or computer-based inventions, and which may prove useful for appeals....

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