Success With Patent Eligibility Rejections
Rejections of patent applications under 35 U.S.C. § 101 for failing to recite patent eligible subject matter are rampant: the USPTO’s Patent Eligibility Guidance and updates to the MPEP may seem opaque, and reconciling analysis from the USPTO with that of the Federal Circuit is difficult, at best. What can we do?
If you're a patent practitioner prosecuting computer-implemented inventions, you have likely experienced the frustration of receiving one of these rejections. A rejection for failing to recite patent eligible subject matter can be daunting, but it is also a part of the journey. This type of rejection may feel like a major setback. Overcoming one, however, is a testament to your efforts to establish practices that embrace the 101 landscape.
To successfully overcome a rejection under § 101 for failing to recite patent eligible subject matter often takes a deep understanding of the legal standards (as set forth by the USPTO and the Federal Circuit), and the technical details of the invention.
Here’s how to turn one of these rejections into an opportunity for success.
Embrace the Difference between Federal Circuit Jurisprudence and Guidance at the USPTO
The USPTO’s Patent Eligibility Guidance positions itself as providing practical instructions and examples for examiners in applying the § 101, as interpreted by the Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) (“Alice”) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (“Mayo”), that is supposedly consistent with the application of §101 by the Federal Circuit. What we see in practice, however, are significant functional differences in approach between the USPTO and the Federal Circuit in applying the test for patent eligibility established by the Supreme Court in Alice and Mayo (the “Alice/Mayo Test”). While the USPTO may believe their Patent Eligibility Guidance and the Federal Circuit’s application of the Alice/Mayo Test are closely aligned, the fact of the matter is they are not. This inconsistency is compounded by patent examiners, who tend to interpret the Patent Eligibility Guidance of the USPTO differently based on their own understanding of training given to them by the Office, and specifics of each case. Lack of uniformity in the application of the Alice/Mayo Test is one of the chief impediments patent practitioners face in predicting how their clients’ inventions will be evaluated, or how amenable an Examiner will be to a given vector of attack on a rejection under § 101 for lacking patent eligible subject matter.
Understanding the differences between the application of the Alice/Mayo Test by the Federal Circuit and Patent Eligibility Guidance issued by the USPTO is key to formulating responses that advocate for eligibility to the full extent of the law, while providing clarity and conformity to the otherwise varying and oftentimes chaotic rejections issued by the USPTO.
Gather Knowledge, Stay Organized, And Be Consistent
Being organized and consistent will significantly enhance the effectiveness of responses to rejections for lack of patent-eligible subject matter under Section 101. We have found it is crucial to keep track of each ground of argumentation previously presented, disentangling examiner responses to identify which grounds of argumentation a given point by the Examiner is intended for, and organizing and focusing subsequent argumentation so that the separate grounds of argumentation are presented consistently and efficiently across the prosecution history.
With a structured approach, you can focus an examiner’s attention to parts of the eligibility analysis that may have been overlooked or avoided through short conclusory statements. Understanding where the Federal Circuit can bring additional context to the Patent Eligibility Guidance, will allow the practitioner to modify an examiner’s thought process and persuade them toward a conclusion of eligibility.
Stick With It
Each rejection and response brings you one step closer to understanding what works and what does not. The process can be grueling, but persistence and adaptability often lead to breakthroughs. Please find included with this post several Notices of Allowance obtained after overcoming a rejection under § 101. These results were achieved using the principles stated above, and are a testament to the effectiveness of our approach.
