How to Prepare and Prosecute Patents in Light of the USPTO’s Post-Alice Focus on Eligibility

By Robert Levy
December 1, 2019

“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.”

How to prosecute post-Alice - https://depositphotos.com/228938678/stock-photo-two-rubber-stamps-words-patent.htmlSince 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.


Image Source: Deposit Photos
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Copyright: Olivier26 

The Author

Robert Levy

Robert Levy is an Intellectual Property Attorney with over 35 years’ experience. Bob has held various corporate patent counsel positions with GE, AT&T, and Technicolor where he has concentrated his practice on worldwide patent prosecution, patent assertion, defense of third-party patent claims, and inventor counseling in high technology areas such as software, computer systems, machine vision, video compression, wireless devices, and content storage and delivery. Bob is a graduate of CorneII University with a BS in Engineering and a JD from Illinois Institute of Technology Chicago Kent College of Law. He is admitted to practice in New Jersey and is registered before the United States Patent and Trademark Office. Bob has served as a CLE lecturer for many years on various patent law topics including Ethical Considerations in Patent Practice and Protecting Computer-Related Inventions.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Concerned December 1, 2019 3:52 pm

    If only the examiners followed the guidelines as required by being a subordinate of the Director.

  2. Paul Morinville December 1, 2019 5:44 pm

    I very much appreciate the well considered guidance on dealing with the USPTO. It is the first step to obtaining a patent right.

    However, the Federal Circuit strongly stated the flat dont give a damn about USPTO guidance so obtaining a patent can only be done at the Federal Circuit. Since they figure that they are the true God granting or taking our patent rights, we need to consider how they arbitrarily make those decisions.

    The second step in obtaining a patent right is getting past the Federal Circuit sometimes decades after the USPTO issued the patent.

    If anyone could find a way to help us mortals understand that, it would be helpful.

  3. Anon December 1, 2019 8:16 pm

    My largest beef with an article like this one (with no doubt to me intending to be a beneficial and “Pro-Patent” one) is the lack of recognizing that the larger problem has nothing to do with prep and pros.

    The larger problem is entirely one of the Supreme Court’s initiation (and amplification by the lower courts following the lead of the Supreme Court).

  4. Liberty December 2, 2019 8:06 am

    This article is what every law firm follows the AIA Act PTAB and 101 have made it next to impossible to get big tech to pay up regardless how well prept you are.

  5. B December 2, 2019 8:52 am

    “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.”

    I’ve never done this once – and I don’t know anyone who has, Then again, once is “too often.”

    @ concerned “If only the examiners followed the guidelines as required by being a subordinate of the Director.”

    And the Director will do nothing when the examiners refuse to follow the guidelines

  6. Mark Nowotarski December 2, 2019 9:55 am

    For inventors reading this, I would add the following questions to pose to your patent attorney/agent.

    During preparation:
    Where will this case likely be classified? Is that technology class having difficulty with 101 rejections? Are there other technology classes we qualify for that are having less difficulty?

    During prosecution:
    Have the new 101 guidelines changed what our examiner is allowing? Can we structure our claims so they are more like what the examiner is allowing?

    Hopefully, the answers to these additional questions will help you get your patent allowed more quickly.

  7. TFCFM December 2, 2019 11:00 am

    This is perhaps a bit beyond the scope of this well-written article, but still bears mention, I think:

    Prior to even preparing a patent application, consider whether your “invention” (in the colloquial sense) is a patent-eligible “invention” (in the patent law sense). If your creation is a mere software algorithm, an idea for how to run a web site or a business, or some other subject matter likely to be considered an “abstract idea” (again, in a patent law sense), consider protecting it in ways other than by publishing it to the world in a patent application that is destined to fail to result in a (valid) patent.

  8. Concerned December 2, 2019 11:09 am

    The above posts reflect the level of frustration:

    SCOTUS amplified the law and the lower courts amplified it further, all negatively toward the inventor.

    The examiners are insubordinate and no job action happens, all negatively toward the inventor.

    The inventor cannot get past the USPTO to get to the Federal Curcuit, to get past them.

    And articles are distributed suggesting it is a matter of how the patent application is prepared to receive a patent. Perhaps change the deck of cards and the card mechanic dealer and the inventor would get a level playing field, regardless of the “how to” of patent application preparation.

  9. Paul Cole December 2, 2019 11:13 am

    If the advice in this article is taken, prosecution of equivalent applications before the EPO is also likely to be facilitated, given the problem/solution analysis required by the EPO. Reciting an unconventional and unique combination of elements solving a practical problem works well in Europe.

  10. Anon December 2, 2019 11:36 am

    Mark,

    While your points are indeed worth noting, do you feel the sense of irony at all in that what your points represent is the very type of thing that the Supreme Court takes umbrage with (“manipulation” at the hand of a scrivener)?

  11. Ternary December 2, 2019 12:04 pm

    It is all very good advice, of course. Unfortunately, it reads more like a hurdle race, wherein the height of each hurdle is set and changed arbitrarily and new hurdles are created randomly. The final hurdle being the CAFC which will prevent you from asserting your carefully drafted patent.

    As a recitation of potential traps, it gives the impression that the establishment does not want you to make an invention, does not want you to get a patent on your invention, does not want you to assert a patent on your invention.

    If we would read this as limitations on science/technology set prior to Enlightenment, we would blame it now on medieval, prejudiced and irrational, even superstitious beliefs. Witchcraft! Nowadays it is legal reasoning.

  12. Ben December 2, 2019 4:43 pm

    America has killed the life blood that made it the greats nation in the world and that was its strong patent system that protected all inventors regardless how small they were. The Government have sold out the nation to corporate elites like FAANG. Inventors have already started to set up roots over seas where patents are protected. They are now moving into a point of no return, it’s just a mater of time that the next great ideas come from Germany or China that will exceed FAANG. America can not have it both ways, and by the looks of things it will not end well for the U.S. in the coming years, if they do not fix their patent system very soon.

  13. Josh Malone December 2, 2019 9:00 pm

    I am extremely impressed by the education of the readers here on IP Watchdog. Presumably thousands more non-commentors are in silent agreement. This is huge progress. The scam is unraveling. Very encouraging. Knowledge is power..

  14. angry dude December 2, 2019 9:34 pm

    Mark Nowotarski @6

    “Is that technology class having difficulty with 101 rejections?”

    Dude,

    Do you understand the absurdity of this question ?

    How can any useful “technology” have any problem with 101 rejections ?

  15. Treyvon December 3, 2019 2:32 am

    To paraphrase the article for those that don’t have the time to read it: just draft extremely narrow picture claims and you’ll be fine.

  16. concerned December 3, 2019 10:00 am

    TFCFM: “Prior to even preparing a patent application, consider whether your “invention” (in the colloquial sense) is a patent-eligible “invention” (in the patent law sense). If your creation is a mere software algorithm, an idea for how to run a web site or a business, or some other subject matter likely to be considered an “abstract idea” (again, in a patent law sense), consider protecting it in ways other than by publishing it to the world in a patent application that is destined to fail to result in a (valid) patent.”

    Your advice seems practical in theory and it is a shame to even consider such advice based on what the law says verbatim.

    The advice is not so easy to apply. SCOTUS amplified the law. My application is still a slam dunk. The Federal Circuit amplified it further and added the process must improve computer hardware(?). A cert has been submitted asking SCOTUS to answer the different situations. Therefore, my application was a slam dunk, now it is compromised by the Federal Circuit amplification pending cert reply (not holding my breath), and who knows what amplification comes not?

    The USPTO puts out memos. My application is a slam dunk. Examiner is insubordinate, does not follow the memos. Who do I trust, the Director, or the underlying SPEs or examiners?

    Berkheimer court says facts matter in a court of law. My application is a slam dunk. Examiner does not address or even acknowledge the evidence placed on record. Who do I believe, the Berkheimer court or the SPEs and examiners?

    We write a claim sentence with a meaningful limitation. The examiner lops off the beginning of the claim sentence with the meaningful limitation and continues the claim sentence by sometimes adding the word “routine.” What or who do I trust?

    Accordingly, to take your advice requires a lot of guessing and trust upfront, the latter in short supply in my opinion. But I have played this game before. In kindergarten where the rules keep changing in the game “tag” to prevent the person from ever being tagged, even if tackled by 20 guys with all 40 hands on the tag target.

  17. Mark Nowotarski December 3, 2019 12:00 pm

    Angry Dude @14,

    Q: “How can any useful ‘technology’ have any problem with 101 rejections?”
    A: In the field of computer implemented inventions, if the application appears to be directed to a business method, it will be classified as a business method (class 705). Business methods, however, are generally considered to be fundamental economic processes and hence abstract. The inventor then has to convince the examiner that the invention is not, in fact, directed to the business method that got it classified in 705 in the first place, but rather to a technical improvement in the functioning of the computer itself. Depending upon the examiner, this can be a very uphill battle.

    On the other hand, if the technology really does improve the functioning of the computer itself irrespective of any business benefits, then the application should be drafted with emphasis on the technological improvements. The application will then be classified into the appropriate computer technology class (e.g. improved database structures, AI, multi-computer data transfer etc.) It’s then much easier to show that the invention is directed to an improvement in the functioning of the computer itself, and hence is not abstract.

    In an ideal world, it shouldn’t make any difference. When an inventor’s time and money are at stake, however, I find it’s best to draft an application in such a way that it faces the fewest hurdles on its way to allowance.

    Anon@10
    Q: “do you feel the sense of irony”?
    A: Every day.

  18. Concerned December 3, 2019 4:19 pm

    Mark@17:

    Yes the “old process must improve the computer hardware” nonsense. Not in Alice was it mandatory!

    Is this “must” a further amplification by the District Court? A cert is out there asking for clarification.

    Question: I place a generic computer on a shoebox and it magically solves cancer. No patent?

    The whole situation is highly suspect.

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