October 19, 2021

Volume XI, Number 292

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Non-obviousness and Inventive Step in Software, Electronics, and Mechanical Cases: Strategies and Practical Examples for Advancing Prosecution at the USPTO and the EPO

Topics to be discussed include

  • The State of Art relied upon by the USPTO and the EPO

  • Challenging USPTO’s prima facie case of obviousness vs positively arguing inventive step using the EPO’s problem-solution framework

  • Differentiating features that matter: technical vs non-technical features in a claim and their role in non-obviousness/inventive step arguments

  • Drafting the description: describing the invention to support the EPO’s technical effect requirement 

 

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