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.

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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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