“Careful planning during the drafting of an application is necessary in order to minimize the need to make deeply narrowing claim amendments and estoppel-inducing arguments in reaction to an Alice rejection.”
Alice Corp v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) sent rejections under 35 U.S.C. § 101 skyrocketing from under 10,000 per year prior to the Alice decision to nearly 35,000 the year the Supreme Court handed down its decision (2014). Peaking at just over 100,000 rejections in 2018, the USPTO’s January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) helped to stabilize and ultimately lower the number of rejections under Section 101 to just over 20,000 in 2021. Though this number may continue to drop – the data on Section 101 rejections for 2022 is not yet complete – one thing is for sure: The number of rejections under Section 101 post Alice still far outnumber the Section 101 rejections made prior to Alice by at least 10,000 per year. As illustrated in Fig. 1 (data gathered using juristat.com), the majority of rejections under Section 101 made since 2014 are still Alice rejections, which leaves room for this number to decrease further.
Assuming not all of the 20,000 Alice rejections under Section 101 are made in applications that truly describe and claim a judicial exception (i.e., law of nature, natural phenomenon, abstract idea) without significantly more, there is still hope for reducing the number of Alice rejections made per year. However, careful planning during the drafting of an application is necessary in order to minimize the need to make deeply narrowing claim amendments and estoppel-inducing arguments in reaction to an Alice rejection, or worse, discovering that no amount of amending and argumentation can save the application and its claims.
The USPTO’s guidance on subject matter eligibility, such as the 2019 PEG, and particularly the October 2019 Update to the PEG (October 2019 PEG Update), can be an effective guide for writing an applications that can avoid and/or overcome Alice rejections without drastic amendments to the claims. For example, the 2019 PEG modified Step 2A of the patent eligibility claim analysis into two prongs: Prong one – does the claim recite a judicial exception? Prong two – does the claim recite additional elements that integrate the judicial exception into a practical application? If the answer to the prong one is “no,” or if the answers to both prongs are “yes,” the claim is deemed not directed to an abstract idea and patent-eligible under Section 101. Period, full stop. Thus, it’s worth the effort to draft an application that leads the reader (i.e., patent examiner), step-by-step, to the conclusion that the claims are patent eligible by answering prongs one and two of Step 2A with a “yes” to each.
Why focus on “yes” answers to prongs one and two of Step 2A? Anecdotally, once a patent examiner makes an Alice rejection, it is very difficult, i.e., nearly impossible, to persuade the examiner that the claims do not recite a judicial exception (i.e., that Step 2A, prong one can be answered “no”). Therefore, it may be easier and more effective to focus on obtaining a “yes” for both prongs one and two. One way to do so is to focus on the technological improvement achieved by the invention in order to demonstrate that the claims integrate whatever abstract idea upon which they touch into a practical application.
The October 2019 PEG Update states that integration into a practical application may be shown through “an improvement in the functioning of a computer, or an improvement to another technology or technical field.” Logically, this involves identifying the technology or technical field improved by the invention defined in the claims. While seemingly a trivial step, Alice rejections often assert that the claims fail to reflect a technical improvement because they recite “generic” computer elements. Implicit in the assertion is the view that the technology improved is “computer technology.” This makes sense to some extent since the only technology that is expressly identified in the October 2019 PEG Update is computer technology (“an improvement in the functioning of a computer”). The remaining technologies are lumped into the somewhat ambiguous “another technology or technical field.” Thus, if an application and its claims do not expressly define the relevant technology or technical field, and the invention involves software or computers, there is a good chance a patent examiner may deem the technology to be “computer technology” by default.
Therefore, it is good practice to expressly state the technology or technical field in the specification of the application, whether the technology is computer/software related or not. This is more than a simple one-sentence declaration of the technology that is often included in the “Field of the Invention” section of the specification. Such sentences are typically quite broadly stated and not normally well tied to the invention described in the specification and/or claimed. Instead, the identification of the technology should include an explanation of the technology, how the disclosed invention fits within the technology, and any subcategories of the technology (i.e., if the technology is wireless communication, for example, subcategories may be cellular communication, WiFi communication, Bluetooth communication, etc.) The objective is to begin to establish a narrative of patent eligibility by (1) providing a description of the technology from which a person of ordinary skill would identify the technology as such, and (2) provide a context for the invention.
Of course, some applicants may bristle at the idea of adding a description of the technology that is any longer than a single sentence for fear that the description may be considered as an admission by the USPTO and/or be somehow used to effectively narrow the scope of any resulting patent claims. However, if a patent examiner mistakenly identifies the technology and/or does not fully appreciate the significance of the improvement achieved by the invention reflected in the claims, the result may be a lingering Alice rejection that requires several rounds of amendments and arguments to overcome – if the rejection can be overcome at all. This may prove more damaging than a paragraph or two added to the specification to more clearly describe the technology and to lend some context to the claimed invention. At least doing so provides the applicant an opportunity to control the narrative and to be proactive with regard to potential Alice issues/rejections.
Once the technology or technological field is identified and described, the next step is to describe the improvement and how the disclosed invention achieves the improvement. The October 2019 PEG Update does not require an application to expressly describe the improvement but doing so helps build the patent-eligibility narrative started with the identification and description of the technology or technical field. The October 2019 PEG Update offers guidance for describing the improvement to the technology. For example, the October 2019 PEG Update regards, as an important first inquiry, whether the “specification…provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” Good news here: The identification and description of the technology or technical field lays the groundwork for a solid description of the improvement. More good news: most applications also describe the invention in good detail – at least enough to satisfy 35 U.S.C. 112. Thus, all that may be required is to explain how the features of the invention, individually and/or collectively, provide an improvement to the technology or technical field.
The temptation may be to add a paragraph or two either at the beginning of the application’s specification or at the end describing the improvement. However, care should be taken with this approach so that the features of the invention are clearly linked to the stated improvement. The October 2019 PEG Update makes it clear that setting forth the improvement “in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art)” is not sufficient. The more decoupled the features of the invention are from the description of the improvement, the less likely it is to be deemed to adequately tie a judicial exception to a practical application. It may be better to weave the description of the improvement into the description of the invention by, for example, explaining the significance and/or contribution of each feature of the invention to the improvement, explaining how the features collectively provide an improvement, or both. Use cases can also be helpful in this regard, and may serve to separate the description of the invention (important for claim drafting flexibility) from description of how the invention provides a technological improvement.
It’s important to note that weaving the description of the technological improvement into the detailed description of the invention and/or into use cases does carry some risks. Many applicants prefer not to extol the virtues of one inventive feature over another for fear that the inventive feature might be deemed critical and/or essential, or might otherwise be used to narrow resulting patent claims in some way. Adding descriptions of how the features of an invention achieve a technological improvement can do just that. However, the need for narrowing amendments and estoppel-creating arguments may result in very narrow claims anyway. Of course, this has to be taken case-by-case, but the risks of expressly tying features of the invention to the technological improvement may still be outweighed by the benefit of creating a narrative of patent-eligibility under Section 101, especially for computer implemented inventions and/or software-based inventions, that serves to limit the amount of claim amendments and arguments necessary during prosecution.
The descriptions of the technology, the invention, and the technological improvement provide a good narrative for patent-eligible claims. To keep the narrative going, the claims should be drafted with terms directly from the specification and which are associated with the description of the technology and the technological improvement. While claims can, and should, be drafted with broader language than the application’s specification, incorporating terms from the specification into the claims increases the chances that a reader will make the connection between the claims and the technological improvement. The aim is to connect the dots for the reader rather than to rely on the reader to make the connection on their own. A good approach is to recite the technology in the preamble, recite the feature(s) of the invention that directly lead to the improvement in the body of the claim(s), and expand upon these the features in the dependent claims. Of course, how broad or narrow to draft the claims will depend on a number of factors including the type of technology, the applicant’s goals for the application, and an honest assessment on how likely the application is to incur an Alice rejection. However, the drafting strategy described herein will put the claims on a path towards patent eligibility under Section 101.
It is important to expressly identify the technology, the technological improvement, how the invention achieves the technological improvement, and to tie the three together in an application’s specification. Otherwise, a reader may not connect these dots in a manner in which applicant intended. It is also important to tie the claim language to the technology and technical improvement described in the specification for much the same reasons. This way, an applicant can proactively address potential Alice Section 101 issues and reduce the need to make deeply narrowing amendments and present pages of estoppel-inducing arguments in reaction to an Alice rejection made in prosecution.
It is, perhaps, impossible to fully safeguard an application against an Alice rejection under Section 101, especially if the subject matter of the application is software related. However, with some planning and some guidance from the 2019 PEG and October 2019 PEG Update, it is possible to draft an application that mitigates the risks of receiving an Alice rejection, and that provides an applicant with every opportunity to overcome an Alice rejection if received.
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