When Alice came down in 2014, much of the patent prosecution bar reacted with denial. Most practitioners hoped the USPTO, the Federal Circuit, or Congress would clean things up — and that adding some magic language to claims and specifications would eventually be enough.

Eli Mazour and Ngai Zhang, separately, came to a different conclusion: there had to be a new, better way to obtain strong patents in the post-Alice world. They started comparing notes more than a decade ago, eventually converged on a shared approach, and now implement these strategies together at Foley & Lardner.

On this episode of Clause 8, Eli and Ngai walk through what they actually do — their unique strategies for avoiding and overcoming Section 101 issues, why it's difficult for other attorneys to implement these strategies, and how they think their practice will be impacted in the age of AI.

In this episode:

* Why relying only on art unit prediction tools & wordsmithing is a losing strategy for § 101

* Why claim 1 shouldn’t be your broadest claim

* How taking features out of independent claims helps advance prosecution - and how the strategy also leaves clients routinely surprised by how broad their issued claims end up

* Examiner interviews as hostage negotiations: Ngai’s framework based on Chris Voss’s Never Split the Difference

* Differing approaches that Ngai and Eli have on whether to push for an explicit on-the-record agreement before ending an interview

* AI as a collaborator for patent drafting and prosecution

* The importance of human interactions and communication for patent prosecution even in the age of AI

Watch the full episode and read the companion post on Voice of IP: https://voiceofip.com/

Subscribe to the Clause 8 YouTube channel for bonus content: https://www.youtube.com/@clause8

📌 Presented by Tradespace — where ideas take flight.

Disclaimer

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