Since the issuance by the United States Supreme Court of its opinion in Alice Corporation Pty Ltd. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014), the United States Patent and Trademark Office (USPTO) has increased its focus on patent eligibility. As a consequence, patent applicants now receive more claim rejections under 35 U.S.C. § 101, leading to protracted prosecution. While rejections under 35 U.S.C. § 101 are likely unavoidable, patent attorneys and agents can take steps during application preparation and prosecution to minimize the likelihood of such rejections and to successfully rebut such rejections when they do arise.

Application Preparation

1. The specification should provide a complete description of the invention, including both its structure and function, as well as how the invention achieves its intended goals.

Patent attorneys and agents must prepare each application to teach how to make and use the claimed invention to comply with 35 U.S.C. § 112. However, to avoid a challenge under 35 U.S.C. § 101, patent attorneys and agents should draft their applications not only to teach how to make and use the claimed invention, but describe how the invention achieves its intended goals, i.e. an improved technological result. Simply describing the invention in terms of generic hardware that performs generic operations, while satisfying 35 U.S.C. § 112, will likely prove fatal when arguing for patent eligibility under 35 U.S.C. § 101.

2.  The claims should specifically recite one of the four categories of patent eligible subject matter under 35 U.S.C. § 101.

Claim drafting is not an exercise in creative writing. Patent attorneys and agents should draft claims to recite one of the four enumerated categories of patent-eligible subject matter set forth in 35 U.S.C. § 101. Past attempts to deviate from these four categories have met with disaster. See In re Ferguson 558 F.3d 1359 (Fed. Cir. 2009) and Digitech Image Technologies LLC v. Electronics for Imaging, Inc. 758 F. 3d 1344 (Fed. Cir. 2014)

3.  The specification and claims should describe that the invention constitutes a practical application (integration of an abstract idea), not simply an abstract idea itself.

The 2019 Revised Patent Subject Matter Eligibility Guidance issued by the USPTO on January 7, 2019 provide a “safe harbor” for claims that integrate a judicial exception into a practical application. In other words, claims that provide such an integration do not constitute a judicial exception, thereby satisfying step 2A of the flow chart process used by the USPTO to analyze patent eligibility.

4.  The specification and claims should describe how the invention improves computer functionality.

The United States Court of Appeals for the Federal Circuit, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), has held that claims that recite an improvement in computer functionality constitute patent eligible subject matter. Indeed, in Enfish, the Federal Circuit went further, holding that claims that recited improved computer functionality satisfy step 2A, thus obviating the need for subsequent analysis under step 2B.

5.  The specification and claims should describe how the invention constitutes an unconventional and unique combination of elements solving a practical problem.

In Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), the Federal Circuit has held that claims which recite an unconventional and unique combination of elements solving a practical problem possess an inventive concept. Thus, such claims satisfy step 2B and possess patent eligibility.

6.  The specification and claims should describe how the invention performs a patent eligible function (i.e., transformation of an article to a different state)

The United States Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981) held claims which recite a function protectable under the patent laws (e.g., transforming or reducing an article to a different state or thing) claim satisfy the requirements of § 101.

7.  The application should Include a variety of different claim types (method, apparatus, and computer-readable medium) with a focus on likely infringers.

Skilled drafters of patent applications recognize the need to draft a variety of different claim types because not every claim will impact every potential infringer.

8.  The application should include claims of narrower breadth that are more likely to gain allowance in view of Alice.

To satisfy the test for patent eligibility set for in Alice, the claims must recite an inventive concept that is something more than a judicial exception. Thus, patent attorneys and agents should consider including claims more narrowly drafted to recite features related to the improved functionality achieved by the invention to satisfy 35 U.S.C. § 101.

Prosecution

1.  Determine the propriety of all rejections, including any alleging ineligible subject matter.

Before substantively responding to any outstanding rejection, patent attorneys and agents should determine whether the Examiner making the rejection has followed all the requirements set forth in the Manual of Patent Examining Procedure (MPEP). If not, consider arguing that the Examiner has failed to establish a prima facie case of unpatentability.

2. Determine whether the subject matter ineligibility rejection(s) embody most current USPTO guidelines.

For the most part, Examiners in the USPTO apply the most recent patent eligibility guidelines during prosecution. Occasionally, an Examiner might not be aware of the latest guidance so patent attorneys and agents so carefully check to make sure each Office Action applies the proper patent eligibility subject matter guidance.

3. Respond with arguments directed to your intended audience.

Many patent attorneys often argue case law in their Office action responses, forgetting that most Examiner are not lawyers. Rather than rely on case law, patent attorneys and agents should rely on the MPEP and Patent Eligibility guidance in their Office action responses.

4. Do not unnecessarily concede step 2(A) of the Alice analysis.

Too often, patent attorneys and agents unnecessarily concede that their claims recite an abstract idea even when the claimed subject matter does not explicitly fit within the defined categories of abstract ideas set forth in the USPTO guidelines. Whenever appropriate, patent attorneys and agents should consider challenging the assertion of abstract subject matter.

5. Argue that the claims integrate a judicial exception into a practical application.

The USPTO 2019 Revised Patent Subject Matter Eligibility Guidance provides a safe harbor for claims that integrate a practical application to meaningfully limit the judicial exception. When appropriate, patent attorneys and agents should take advantage of that safe harbor.

6. If appropriate, consider challenging any assertion that an activity is routine and/or conventional in order to force the Examiner to re-evaluate such an assertion. (Berkheimer)

In making patent-ineligibility rejections, Examiners often allege that the one or more claim features constitute well know conventional activity. When appropriate, patent attorneys and agents should consider challenging such assertions as provided in Berkheimer v. HP Inc., 881 F. 3d 1360 (Fed. Cir. 2018)

7. Consider the path of least resistance.

Sometimes, it is more expedient to accept claims that are less than ideal to advance patent prosecution rather than engage in protracted prosecution to pursue claims that never issue

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