Celebrating Excellence: Women Patent Prosecutors with Remarkable Track Records in 101

IP Toolworks recognized Finnegan attorney Kelly Horn based on her track record in successfully prosecuting more than 50 patent applications facing subject matter eligibility rejections.

Kelly combines her extensive knowledge of U.S. Patent and Trademark Office (USPTO) practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents worldwide. She maintains an active patent prosecution and counseling practice and draws on her experience before the USPTO to help clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts.

Asked by the legal software company to provide one practice tip, Kelly said:

“Don’t hesitate to conduct Examiner interviews early in prosecution, even after receiving the first non-final Office Action. If you prepare with a proposed amendment and 1-2 of your best arguments based on the amendment, the Examiner will usually provide guidance as to whether the amendment will likely overcome the Section 101 rejection or needs to be adjusted. Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner. By conducting early interviews and getting Examiner feedback before multiple rounds of prosecution, prosecution can often be compacted.”

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