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