Tips for patent prosecution strategies post-Alice.
Previous articles in this series have discussed what to look for in evaluating whether patent protection should be pursued for an invention, how to best present an invention in a patent application to avoid a subject matter eligibility rejection, strategies for addressing patent eligibility during the pleading stage in litigation, defending against subject matter eligibility defenses in litigation, and application of the Supreme Court's two-part test in Mayo and Alice. This article will focus on particular patent prosecution strategies for responding to subject matter rejections in patent applications involving computer implemented inventions.
Following the recent Supreme Court decisions on patentable subject matter, and the initial USPTO guidelines regarding patent subject matter, patent examiners are now issuing rejections under 35 USC [sec] 101. Such rejections have had a devastating effect on applications assigned to the Patent Office's group art unit 3600, which examines business method patents. In particular, the authors are aware of only a small number of applications that have been allowed since the new patent subject matter eligibility decisions and guidelines began to be applied by the USPTO.
Although there have been opinions expressed that similar effects would be felt by computer implemented inventions -- in particular by software inventions -- to date the effect on computer implemented inventions has been more limited. In any event, when a rejection is made on the grounds that an invention is directed to patent ineligible subject matter, the preferred approach is, as far as possible, to respond with arguments that are based on guidance generated by the USPTO itself, rather than on judicial decisions. USPTO guidance often is phrased such that it can be applied generally to different inventions. Also, examiners are often more receptive to USPTO guidance than to court opinions.
The USPTO's "Interim Guidance on Patent Subject Matter Eligibility," published on Dec. 16, 2014, is the latest set of guidelines on the topic, and they are intended to provide guidance for examiners to use in determining whether an invention presents patent eligible subject matter under the latest judicial decisions. That guidance includes a flow chart setting forth a two-step analysis for making such a determination. In the first step, an examiner reviews the invention to determine whether it is a machine, process, manufacture or composition of matter. If it is not, the inquiry ends, as the invention is not directed to a statutory category of patentable subject matter. If the invention is directed to one of the statutory categories, the analysis proceeds to the second step, in which the examiner makes a determination as to whether the invention is directed to one of the judicial exceptions to patentable subject matter.
A claim that, as a whole, does not fall into one of the judicial exceptions is patent eligible subject matter, and no further analysis is required. If, however, the examiner determines that a claim is directed to one of the judicial exceptions, the examiner must then determine whether the claim recites a patent eligible application of the exception. In particular, the claim must be analyzed to determine whether it will "tie up" the excepted subject matter and pre-empt others from using that subject matter. The guidelines make clear that the claim must be considered as a whole, rather than as individual elements in isolation.
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In order for a claim to be directed to a patent eligible application of an exception, it must amount to significantly more than the exception itself. Claim limitations that amount to significantly more than the judicial exception to which the claim is directed are present where the limitations: are improvements to another technology or field or are improvements to the functioning of the computer itself; apply the judicial exception with or by the use of a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add a specific limitation other than that which is well-understood, routine, and conventional in the field; or add unconventional steps that confine the claim to a particular useful application, or other meaningful applications.
During the patent examination process, when pursuing claims directed to computer implemented inventions, the ideal situation is to avoid attracting a rejection under Section 101 altogether. The odds of successfully avoiding a subject matter ineligibility rejection, or of overcoming such a rejection, can be increased by drafting claims that are relatively detailed, that present the invention in relatively narrow terms, and that recite concrete or tangible elements. Also, claims that recite a machine or transformation, or that are directed to a technological art, are more likely to be found to present patent eligible subject matter. For example, if the invention can be implemented using specialized hardware or a particular machine, elements reciting that hardware or machine should be included in the claims. Still another suggestion is to include claim elements that demonstrate an effect on the operation of a computer, network or the Internet. Note, however, that simply limiting a claim to a particular field or area of technology will not be considered meaningful. Requiring routine steps or post-solution activity alone will not provide patent eligible subject matter.
Narrowly framed claims can help deflect a finding that the claims preempt all applications of what might be termed an abstract idea. In addition, they give the examiner more reason to find that the claimed invention is novel and non-obvious, increasing the likelihood that the claim will simply be allowed. This approach can therefore be used to obtain patent protection of important, specific embodiments of the invention. Broader protection can then be pursued in a continuation application. Deferring an attempt to obtain broader claims also has the advantage of giving time for the courts, the USPTO and the examining core itself to more definitively define the contours of patent eligible subject matter.
Arguments in response to receiving a rejection based on ineligible subject matter can include a demonstration that the claim in question is not directed solely to an abstract idea. For example, an argument that the invention is directed to a technological art, as opposed to an economic arrangement or method for ordering human activity, can be presented. Also, the USPTO Guidelines provide a streamlined analysis for a claim that, viewed as a whole, does not seek to tie up any judicial exception such that others cannot practice the exception. In addition, it can be pointed out to the examiner that computer implemented inventions, including software, are not per se invalid. Moreover, the Supreme Court has cautioned that care is required in this area, as at some level all inventions can be seen as involving an abstract idea. In general, and until more definite guidance is available, any argument that can be used to establish that a claim does not preempt the field, would allow for alternative solutions and for other uses of the aspect of the claims that the examiner finds are abstract, should be considered.