Michael Fainberg Quoted on Navigating Section 101 Challenges and Leveraging Experience for Client Benefit

Managing IP
Partner Michael Fainberg was quoted by Managing IP discussing the challenges and additional costs associated with Section 101 in patent prosecution, and how firms can assist clients in mitigating these extra expenses.

Michael provided an example of a fintech patent application that ArentFox Schiff had filed, which initially faced rejection based on Section 101 grounds. The firm appealed the decision at the Patent Trial and Appeal Board (PTAB), resulting in a reversal of the original rejection.

“It shows that sometimes you have to fight those cases. In that sense, it can get more expensive for a client,” he said.

Drawing on the firm’s recent victory at the PTAB, Michael shared how ArentFox Schiff applies the knowledge gained from these experiences when negotiating with examiners in future cases.

“We learn from our experience and when we work on the next case, we carry the knowledge we obtained from our prior experience to understand what issues will arise,” he said.

Michael added that ArentFox Schiff organizes monthly Patent group meetings, serving as a platform for understanding how to navigate Section 101 rejections. He anticipates discussing the recent PTAB case at an upcoming meeting to not only enable his colleagues to apply the insights gained in their future cases, but also provide an opportunity for attorneys to share knowledge they've acquired from in-house lawyers. All of this is done while maintaining strict client confidentiality and not disclosing specific details.

“We’re not raising prices for our clients. We use our knowledge to make things as streamlined and economical as possible for our clients,” he said.

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