10 Jan 2023
Responding to Rejection: Diagnosing and Treating Rejections in Life Sciences Patent Prosecution
Check out our practice note, including guidance, supporting statements of law, and case citations, to construct and fine-tune arguments for responding to a U.S. Patent and Trademark Office (USPTO) office action rejecting a patent claim for a life sciences invention as patent-ineligible under 35 U.S.C. § 101.
Related Content
- Office Action Response Argument (Section 101) (Life Sciences)
Utilize this template to efficiently draft arguments to overcome a rejection of diagnostic method patent claims under 35 U.S.C. § 101.
- Patent Office Action Response
Use this template in combination with the response argument template above to prepare a complete response to an office action that rejects claims based on a lack of patent-eligible subject matter.
- Patent Office Action Response Checklist
Refer to this checklist to ensure you are not missing any steps when responding to an office action.
- Patent-Eligibility: Diagnostic Method Claims Checklist
Do a quick check on your diagnostic method claims with guidance on the legal framework for eligibility, claims found eligible and ineligible, and drafting tips.
- Patent-Eligible Subject Matter (Section 101) Statements of Law
Review selected statements of law describing the legal principles guiding the analysis of whether a patent claim is directed to patent-eligible subject matter.
- USPTO Patent Subject Matter Eligibility Guidelines 2019
Get up to speed on the USPTO examination guidelines for patent-eligible subject matter.
- Patent Office Action Response Resource Kit
Find additional guidance for responding to office actions with this resource kit, including links to practice notes, templates, and checklists.
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