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

Join us for a discussion of the differences between US obviousness and the EPO’s inventive step test, with an emphasis on the software, electronics, and mechanical arts. We will focus on worked examples, highlighting the different approaches adopted by the USPTO and the EPO, as opposed to focusing exclusively on case law. We will provide practical tips that can be used to navigate the different challenges encountered prosecuting applications in each jurisdiction.

Topics to be discussed include:

• The state of art relied upon by the USPTO and the EPO
• Challenging the USPTO’s prima facie case of obviousness vs. positively arguing the inventive step using the EPO’s problem-solution framework
• Differentiating features that matter: technical vs. nontechnical 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
  
  

Recorded: View On Demand

Speakers:
Luigi Distefano
Yelena Morozova
Sarah Rodriguez